The USPTO received over 612,000 trademark applications in fiscal year 2025. Roughly 20% of those applications received an office action, meaning the examining attorney found a problem serious enough to require a formal response. Some of those problems are fixable. Many trace back to decisions the applicant made (or failed to make) before they ever clicked "submit."
This article covers the decisions and searches you need to complete before filing a trademark application. Not the filing process itself (for that, see how to trademark a name), but the preparation that determines whether your application succeeds or stalls. That means your clearance search, filing basis, goods and services description, Nice class selection, mark format (standard character vs. design), and specimen of use. Get these right, and you eliminate the most common grounds for refusal. Get them wrong, and you may spend 12 to 18 months waiting for a rejection you could have avoided.
Run a Clearance Search Before Your Trademark Application
The single most common reason trademark applications get refused is Section 2(d) likelihood of confusion, the legal standard for whether your proposed mark is too similar to an existing registration. If someone already owns a mark that looks, sounds, or means the same thing as yours in a related category of goods or services, the USPTO will refuse your application. No amount of careful drafting on the rest of the form fixes that.
Most Common Reasons Trademark Applications Get Refused
A clearance search answers a simple question before you spend $350 or more per class in filing fees: is there an existing mark that would block mine?
Knockout search vs. comprehensive search. A knockout search checks for identical or near-identical marks in your specific class. It takes minutes and catches the obvious conflicts, the ones where someone already registered your exact name for the same type of product. A comprehensive clearance search goes further: phonetic equivalents (SIGNA vs. CYGNA), translations (LUPO vs. WOLF for the same goods), visual similarities in design marks, and marks in related classes that could still create confusion. Comprehensive searches also check state registrations, common law usage, and domain names.
A knockout search is the minimum. If your exact mark is already registered in your class, stop. A comprehensive search is what professionals recommend before committing filing fees and legal costs, especially if the mark is central to your business identity.
Interpreting results. Not every match is a blocker. An identical mark in an unrelated class (think DELTA for airlines vs. DELTA for faucets) may coexist without issue. A similar mark in the same class, however, is a serious problem even if it is not identical. The examining attorney considers the marks' appearance, sound, meaning, and commercial impression alongside the relatedness of the goods and services. A phonetic match in a related class is often enough for a refusal.
Options for searching. The USPTO's free search tool (formerly TESS, now replaced by the Trademark Search system) covers the federal register. For broader coverage, third-party trademark search tools can check multiple jurisdictions simultaneously. Signa's API, for example, searches across 200+ offices. Commercial search firms offer attorney-reviewed comprehensive reports. For a detailed walkthrough, see the free trademark search guide.
Whatever method you use, search before you draft. A conflict discovered after filing means lost fees and wasted months.
Choose Your Filing Basis
Every U.S. trademark application requires a filing basis, the legal ground on which you claim the right to register. For most applicants, the choice comes down to two options under the Lanham Act.
Section 1(a): Use in commerce. You are already using the mark in connection with the goods or services listed in your application. "Use in commerce" means the mark appears on your product, packaging, or marketing materials in a way that crosses state lines or involves interstate commerce. If you are selling software online under the mark today, you likely qualify.
Section 1(b): Intent to use. You have a bona fide intention to use the mark in commerce but have not started yet. This is common for products in development, planned brand launches, or companies securing a name before going to market.
The practical difference matters. A use-based application under Section 1(a) can proceed straight to examination and, if approved, to registration. An intent-to-use application under Section 1(b) adds steps: after the mark is approved, the USPTO issues a Notice of Allowance, and you then have six months to file a Statement of Use proving you have actually begun using the mark. Extensions are available (up to 36 months total), but each extension costs $125 per class.
When intent-to-use makes sense. If you are still building your product, an ITU application locks in your filing date, which establishes priority over anyone who files after you. That priority date can be decisive if a competitor files for a similar mark while you are still in development. The extra cost and paperwork are worth it when the alternative is losing the name entirely.
The common mistake. Claiming Section 1(a) when you are not actually using the mark in commerce. Some applicants assume that having a landing page or a social media handle counts. It generally does not. If the examining attorney requests a specimen of use and you cannot provide one that shows genuine commercial use, your application has a problem. About 13% of trademark applications are abandoned before examination even begins, and premature or incorrect filing basis claims contribute to that number.
Draft Your Goods and Services Description
This is the most consequential decision in the entire trademark application, more important than the mark itself. Your goods and services description defines the scope of your trademark protection. Too broad, and the examining attorney will reject it. Too narrow, and you leave gaps competitors can exploit. Once your application is filed, you can narrow the description but you cannot expand it.
The USPTO ID Manual. The USPTO maintains the Acceptable Identification of Goods and Services Manual, a database of pre-approved descriptions. Using a description from this manual keeps your filing cost at the base rate of $350 per class. Custom descriptions that do not appear in the ID Manual trigger a $200 per class surcharge, bringing the cost to $550 per class. That difference adds up, and pre-approved descriptions also reduce the chance of an office action requesting amendments to your identification.
For a full breakdown of where filing fees fit into the total cost, see how much does a trademark cost.
Common mistakes for software companies. "Computer software" alone is too broad. The examining attorney will require you to specify the function or purpose of the software. "Downloadable mobile application software for managing personal finances" is specific enough. "Software" is not.
On the other end, "downloadable software for tracking expenses in cryptocurrency wallets for freelance graphic designers" may be so narrow that a competitor offering nearly identical software for a slightly different audience could argue they fall outside your registration.
Good descriptions hit the middle ground:
- Too broad: "Computer software"
- Too narrow: "Downloadable software for real-time trademark monitoring of Class 25 apparel brands in the European Union"
- Appropriate: "Downloadable and recorded computer software for monitoring and analyzing trademark registrations"
Avoiding the surcharge. If you want to avoid the $200 per class surcharge for custom descriptions, every item in your goods and services description must come from the ID Manual. If even one item requires a free-form description not found in the manual, that class incurs the surcharge. Draft the description early and check each item against the manual before you start filling out the application form.
Consult a trademark attorney for legal guidance specific to your situation, particularly when drafting goods and services descriptions. The scope of your description has long-term consequences for enforcement and licensing.
Select the Right Nice Classes
Nice classes (formally, the Nice Classification) are the international system for categorizing goods and services into 45 classes. Classes 1 through 34 cover goods. Classes 35 through 45 cover services. Every trademark application must specify at least one class, and each class carries a separate filing fee.
For tech companies, three classes come up most often:
- Class 9: Downloadable software, mobile apps, computer hardware, electronic publications. This is the most populated class at the USPTO, with over 847,000 active registrations.
- Class 35: Advertising, business management, online retail services. If your product helps businesses manage operations, marketing, or sales, this class likely applies.
- Class 42: Software as a service (SaaS), cloud computing, platform services. If your software runs on your servers and customers access it through a browser or API rather than downloading it, Class 42 is the right home.
When you need multiple classes. If your product is a downloadable app (Class 9) that also offers a cloud-based version (Class 42) and includes an online marketplace (Class 35), you may need all three. Each class carries a $350 base filing fee. For a startup filing in three classes, that is $1,050 in government fees alone, before any surcharges for custom goods descriptions.
When one class is enough. If your product fits neatly into one class, file in one class. You can always file additional applications in other classes later if your product expands. Filing in classes you do not actually need wastes money and can complicate your application if the examining attorney questions whether you are genuinely offering goods or services in each class claimed.
The right approach is to list every good or service you currently offer (or, for ITU applications, genuinely intend to offer), then map each one to its corresponding Nice class. For a detailed breakdown of all 45 classes with examples, see the Nice classification guide.
Prepare Your Specimen of Use
A specimen is a real-world example showing how your mark is actually used in commerce. The USPTO requires one to confirm that the mark functions as a trademark, not just as a decorative element or an internal project name. For Section 1(a) applications, you submit a specimen with your initial filing. For Section 1(b) intent-to-use applications, you submit it later with your Statement of Use.
Specimens for goods vs. services. For goods (physical products, downloadable software), acceptable specimens include product packaging, labels, tags, or screenshots of a website where the product is sold with the mark displayed near the product name and a purchase mechanism. For services, acceptable specimens include website screenshots showing the mark used in the advertising or rendering of the services, brochures, or signage.
Common rejections. The USPTO frequently rejects specimens that show the mark used as a trade name (the company name in a "contact us" footer) rather than as a trademark identifying specific goods or services. An "About Us" page mentioning the brand name is not a valid specimen. A product page displaying the mark in connection with a specific product available for purchase generally is.
Other common rejections: specimens that are merely ornamental (a large logo on the front of a t-shirt may be seen as decoration, not a trademark), specimens that are too altered or digitally manipulated, and specimens that do not match the mark as filed.
For ITU applicants. You will not need a specimen until you file your Statement of Use, but start collecting potential specimens now. Screenshot your product pages, save packaging mockups, document how you plan to display the mark. When the Notice of Allowance arrives, you will have six months to submit your Statement of Use with a compliant specimen. Having materials ready eliminates last-minute scrambling.
Trademark Application Checklist
Before you open the USPTO's TEAS filing system, confirm you have completed each of these steps:
- Clearance search completed. You have searched for identical and similar marks in your class and related classes. No blocking conflicts found, or conflicts have been assessed by an attorney and deemed manageable.
- Filing basis selected. You know whether you are filing under Section 1(a) (use in commerce) or Section 1(b) (intent to use), and you have evidence or a genuine plan to support that basis.
- Goods and services description drafted. Your description is specific enough to survive examination but broad enough to cover your actual offerings. You have checked each item against the USPTO ID Manual to avoid the $200/class surcharge for custom descriptions.
- Nice classes identified. You know which classes apply to your goods and services, and you have budgeted for the filing fee in each class ($350 base, plus any applicable surcharges).
- Specimen ready (for Section 1(a) filers). You have a specimen that shows the mark used in commerce in connection with the goods or services listed in your application.
- Filing fee budgeted. You have accounted for government fees, and if applicable, attorney fees for review or filing assistance.
If your clearance search found potential conflicts. A potential conflict does not always mean you cannot proceed. Similar marks in unrelated classes, marks that are registered but no longer in use, or marks with narrow goods descriptions may leave room. But assessing these situations requires judgment that goes beyond a checklist. This is where professional legal counsel earns its fee.
When to hire an attorney. The USPTO does not require an attorney for U.S.-based applicants. But if your clearance search returned close matches, if your goods and services span multiple classes, or if the mark is critical to your business, the cost of an attorney (typically $500 to $2,000 for a standard filing) is small compared to the cost of a failed application and the 12 to 18 months you will have lost waiting for the outcome.
For a complete walkthrough of the filing process itself, see how trademark registration works. For a breakdown of all associated costs, see how much does a trademark cost.
A trademark application is not particularly complex, but it is unforgiving. The decisions you make before filing (your clearance search, filing basis, goods and services description, class selection, and specimen) determine whether your application moves toward registration or toward an office action. Preparation is the difference.
For general background on what trademarks are and why they matter, see what is a trademark.
Consult a trademark attorney for legal guidance specific to your situation.
Signa provides an API for searching 147M+ trademarks across 200+ offices, useful for the clearance search step of application preparation. Learn more at signa.so.