Trademark Readiness Checklist

This checklist covers the key questions to ask before investing in a trademark application. Working through these items in advance reduces the risk of office actions, refusals, and wasted filing fees. If you have questions after reviewing, our attorney is available to help.

1. 01

   Your mark is distinctive — not merely descriptive

   The strongest trademarks are fanciful (invented words like XEROX) or arbitrary (common words applied in an unrelated context, like APPLE for computers). Suggestive marks are also protectable. Purely descriptive terms — words that directly describe your product or service — are generally not registrable without proof of acquired distinctiveness.

   Attorney tip: Ask: does the mark immediately describe what the product does, or does it require imagination?

2. 02

   You have conducted a clearance search

   Before filing, search the USPTO's Trademark Electronic Search System (TESS) for identical or confusingly similar marks in the same or related classes. A clearance search also covers common-law use (unregistered marks that may still have priority in a geographic area).

   Attorney tip: A thorough search covers exact matches, phonetic equivalents, and design elements if your mark includes a logo.

3. 03

   You have identified the correct goods and services classes

   The USPTO uses the International Classification System (Nice Classification) — 45 classes covering specific goods and services. Your registration only protects you in the classes you file. Filing in the wrong class leaves gaps in protection.

   Attorney tip: Class 45 covers legal services. Classes 35, 41, and 42 cover business, education, and software services respectively.

4. 04

   You know whether you are filing use-based or intent-to-use

   If you are already using the mark in commerce (selling goods or services under the mark across state lines), you may file a use-based application (1(a)). If you have not started using the mark yet, file an intent-to-use application (1(b)) to secure your priority date while your business launches.

   Attorney tip: Intent-to-use applications require a follow-up Statement of Use filing once you begin using the mark in commerce.

5. 05

   You own (or will own) the rights to the mark

   The applicant must be the owner of the mark — the entity that controls the quality of the goods or services offered under it. If you are filing as an individual, make sure the mark is not owned by a corporate entity you have formed. Correct ownership from the start avoids expensive correction filings later.

   Attorney tip: If you have a business entity (LLC, corporation), that entity should typically be the applicant.

6. 06

   You are prepared for the USPTO review timeline

   After filing, the USPTO currently generally reviews new applications for the first time approximately 6–12 months after filing. If approved for publication, the mark is published for opposition for 30 days. If no oppositions are filed and you submitted a use-based application, registration issues shortly after. Intent-to-use applications require a Statement of Use before registration issues.

   Attorney tip: The full process typically takes 8–14 months from filing to registration, sometimes longer.

7. 07

   You have a plan for post-registration maintenance

   Registration is not permanent. You must file a Section 8 Declaration of Continued Use between years 5 and 6, and a combined Section 8 & 9 Renewal between years 9 and 10, and every 10 years thereafter. Missing these deadlines cancels your registration.

   Attorney tip: Calendar your renewal windows. Many registrations lapse simply because deadlines are missed.