A trademark is a word, logo, slogan, or other identifier that tells customers who is behind a product or service. To protect one, search before you commit to a name, choose a distinctive mark, and file a federal application with the USPTO as early as you can, because your filing date can establish nationwide priority. After registration, you must keep using, maintaining, and policing the mark.
Many businesses discover a trademark problem only after they have printed packaging, built a website, and started advertising. Then a cease-and-desist letter arrives, or the USPTO refuses the application. A few early steps avoid most of that.
1. Run a Clearance Search First
Before you invest in a name, confirm no one else is using a confusingly similar mark for related goods or services. A good clearance search covers:
- The USPTO’s trademark search system, for registered marks and pending applications
- State trademark registrations
- Common-law use: websites, marketplaces, app stores, and business directories
- Domain names and social media handles
Unregistered marks matter. A business that has used a mark first can hold common-law rights in the area where it operates, even without a registration, and can challenge or limit your use. Exact matches are not the only risk. Similar sound, appearance, or meaning on related products can be enough for a likelihood of confusion.
2. Choose a Strong Mark
Trademarks fall on a spectrum of distinctiveness, from strongest to weakest:
- Fanciful: invented words, such as Kodak or Xerox
- Arbitrary: real words unrelated to the product, such as Apple for computers or Dove for soap
- Suggestive: marks that hint at a quality but require imagination, such as Citibank or Microsoft
- Descriptive: marks that describe the product, which are protectable only after acquiring “secondary meaning” with consumers
- Generic: the common name of the product, which can never be a trademark
Marketing teams often prefer descriptive names because customers immediately understand them. Those names are harder to register and enforce. Fanciful, arbitrary, and suggestive marks are easier to protect. For more on naming, see our trademark tips for startups.
A descriptive mark that is refused registration on the Principal Register may still qualify for the Supplemental Register. That registration lets you use the ® symbol and blocks later confusing applications, though it does not carry all the legal presumptions of a Principal Register registration.
3. File Early: Intent-to-Use vs. Use-Based Applications
You can file a federal application based on actual use in commerce or on a bona fide intent to use the mark. An intent-to-use application lets you reserve a mark before launch. Registration will not issue until you file proof that you have started using it.
The key advantage is priority. Once the registration issues, your filing date serves as a nationwide “constructive use” date. Suppose you file an intent-to-use application on January 1. A competitor starts using a similar mark on January 10 and files its own application on January 17. Even though the competitor reached the market before you, your January 1 filing date gives you priority, because the competitor had no rights before that date. A business that was already using its mark before January 1, however, may keep rights in its area.
Filing early also avoids the cost of rebranding after you have built goodwill in a name you cannot keep.
4. Understand Specimens and Office Actions
To prove use, you submit a specimen: real evidence of the mark as customers see it, such as product labels, packaging, or a webpage where the goods can be purchased. For services, advertising or a website showing the mark with the services typically works. The USPTO rejects mockups and digitally altered images.
Most applications receive at least one office action, a letter from the examining attorney raising a refusal or requirement. Common issues include likelihood of confusion with an existing mark, descriptiveness, and unclear descriptions of goods or services. Response deadlines are strict, and missing one can result in abandonment. Approved marks are then published for opposition, giving third parties a window to object.
5. Use ® and ™ Correctly
You may use ™ (or ℠ for services) with any mark you claim, registered or not. The ® symbol is reserved for marks registered with the USPTO, and only for the goods or services covered by the registration. Using ® before registration can create problems with the USPTO and in litigation.
6. Keep Your Registration Alive
A federal registration can last indefinitely, but only with maintenance filings:
- A Section 8 declaration of continued use between the 5th and 6th years after registration
- A combined Section 8 declaration and Section 9 renewal every 10 years
Missed deadlines, after any grace period, lead to cancellation. Record ownership changes with the USPTO as well. Our articles on assignment of trademark rights and joint ownership cover those issues.
7. Secure Domains and Social Handles
A registration does not automatically give you a matching domain name or username. Secure them early, ideally when you file. If someone registers a confusingly similar domain in bad faith, domain dispute procedures and federal law may provide remedies.
8. Monitor and Enforce
Trademark rights are weakened when owners ignore infringement. Watch new USPTO filings, marketplaces, and online use for confusingly similar marks. Options range from a cease-and-desist letter to an opposition or cancellation proceeding to a lawsuit. Newer risks, including AI-generated content, are covered in protecting your trademark in the AI era.
A Note on Fees and Foreign Applicants
The USPTO changed its trademark fee structure in 2025, including surcharges for some applications, so check the current fee schedule before budgeting. Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney.
The Takeaway
Search before you brand, choose a distinctive mark, and file early to lock in priority. After registration, use the correct symbol, meet maintenance deadlines, and watch for infringers. Common-law rights exist without registration, but a federal registration gives far stronger, nationwide protection.
Frequently Asked Questions
Do I need a registration to have trademark rights?
No. Using a mark in commerce creates common-law rights, but they are generally limited to the area where you do business. A federal registration provides nationwide priority and stronger enforcement tools.
Can I file a trademark application before I launch?
Yes. An intent-to-use application lets you file based on a bona fide plan to use the mark. The registration issues only after you show actual use, but your filing date can establish nationwide priority.
When can I use the ® symbol?
Only after the USPTO registers your mark, and only for the goods or services listed in the registration. Before then, use ™ or ℠.
How long does a federal trademark registration last?
It can last indefinitely if you keep using the mark and file maintenance documents on time. That means a declaration of use between the 5th and 6th years, then renewal every 10 years.
How Sutter Law Can Help
Sutter Law handles trademark clearance, USPTO applications, office action responses, and enforcement as part of our intellectual property practice. If you are naming a new business or product, contact us for a free consultation.
This article is general information, not legal advice. Reading it does not create an attorney-client relationship.
