The Trademark Registration Process

You've prepared and submitted your trademark application. Now begins the official registration journey—a structured process involving examination, publication, potential opposition, and ultimately registration. Understanding each phase and realistic timelines helps you plan appropriately, track progress effectively, and know what actions you may need to take.

Registration Process Overview

Trademark registration follows a sequential process across all major jurisdictions. While specific timelines vary between the USPTO and EUIPO, the fundamental stages are consistent:

The process includes these five core stages:

1. Filing & Receipt: Application submitted, filing date assigned, serial number issued
2. Examination: Trademark office reviews application for legal compliance and conflicts
3. Publication: Approved marks published in official gazette for public review
4. Opposition Period: Window for third parties to challenge registration
5. Registration: Certificate issued, exclusive rights officially begin

Each jurisdiction implements these stages differently with varying timelines, requirements, and procedures.

Filing and Receipt

Submitting Your Application

Once you submit your application through the official portal (TEAS for USPTO, eSearch Plus for EUIPO) and pay the required fees, the trademark office processes your filing and assigns critical identifiers.

Receiving Your Filing Date and Serial Number

Within 1-2 business days of submission, you'll receive:

• Serial Number: Unique identifier for tracking your application throughout its lifecycle
• Filing Date: The official date your application was received (not the date you started preparing it)
• Confirmation: Email confirmation with application details and serial number

Importance of Filing Date (Priority)

Your filing date establishes several critical rights:

The serial number becomes your reference for all future correspondence, status checks, and office actions. Keep it accessible and include it in all communications with the trademark office.

USPTO Registration Process

The USPTO follows a structured examination process with predictable timelines, though actual duration varies based on application volume, examiner workload, and case complexity.

USPTO Timeline Overview

Total Timeline: 12-18 months for straightforward applications with no office actions or oppositions.

Detailed USPTO Stages

1. Initial Review & Examiner Assignment (3-4 months)

After filing, your application enters a queue. The USPTO assigns applications to examining attorneys based on filing date order and examiner specialization. During this period, your application status shows "New Application Will Be Assigned to an Examining Attorney Approximately 3 Months from Filing Date."

No action is required from you during this waiting period.

2. Examination Phase (2-3 months)

Once assigned, an examining attorney conducts a comprehensive review:

Search for Conflicts: Reviews USPTO database for identical or confusingly similar marks in related classes

Substantive Review: Evaluates:

• Mark distinctiveness (not merely descriptive or generic)
• Proper identification of goods/services
• Acceptable specimen (use-based applications)
• Compliance with all filing requirements

Three Possible Outcomes:

1. Approval for Publication: No substantive issues, application proceeds to publication (15-20% of applications)
2. Non-Final Office Action: Issues identified that must be addressed (70-80% of applications)
3. Final Office Action: After reviewing initial response, examiner maintains refusal (if first response unsuccessful)

3. Publication in Official Gazette (4 weeks)

Approved applications are published in the weekly Trademark Official Gazette (TMOG), an online publication listing all marks approved for registration. Publication serves as public notice of your pending registration.

4. Opposition Period (30 days)

Following publication, a 30-day window opens during which any party believing they would be harmed by your registration may file an opposition with the Trademark Trial and Appeal Board (TTAB).

Statistics: Fewer than 3% of published applications face opposition. Most applications proceed to registration without challenge.

5. Registration or Notice of Allowance

For use-based applications: If no opposition is filed (or oppositions are overcome), the USPTO issues a registration certificate approximately 3-4 months after the opposition period closes.

For intent-to-use applications: The USPTO issues a Notice of Allowance instead of a registration. You must then file a Statement of Use proving you've begun using the mark in commerce before registration will issue. (See Intent-to-Use Timeline section below.)

EUIPO Registration Process

The EUIPO process is generally faster than USPTO, with a well-defined Fast Track option that can accelerate registration significantly.

EUIPO Timeline Overview

The key difference between Fast Track and Standard processing is absolute grounds examination priority. Fast Track applications receive expedited review.

Detailed EUIPO Stages

1. Formalities Check (2 weeks)

The EUIPO conducts an initial review to verify:

• Complete application form submitted
• Owner correctly identified
• Clear representation of the mark provided
• Acceptable list of goods and services included
• Proper fees paid

If issues exist: The EUIPO issues a deficiency letter requiring corrections within 2 months (extendable to 4 months).

If complete: Application proceeds to substantive examination.

2. Absolute Grounds Examination (2-3 months)

EUIPO examiners assess whether the mark meets registration requirements under Article 7 EUTMR:

Evaluated Criteria:

• Distinctiveness: Mark must be capable of distinguishing goods/services
• Not descriptive: Mark cannot merely describe characteristics, quality, or purpose
• Not generic: Mark cannot be the common name for goods/services
• Not prohibited: No national symbols, offensive terms, or deceptive elements
• Not functional: Shape marks cannot be purely functional

Important Difference from USPTO: The EUIPO does not examine for conflicts with existing registered marks (relative grounds). This examination only occurs if an opposition is filed after publication.

3. Publication in EU Trade Marks Bulletin

Once approved, the EUIPO publishes your application in the EU Trade Marks Bulletin in all 24 official EU languages. Publication includes:

• Mark representation
• Owner details
• Goods and services list
• Application number and filing date

4. Opposition Period (3 months)

Following publication, a 3-month opposition period begins. Owners of earlier registered marks or other rights may file oppositions if they believe your mark conflicts with their rights.

Opposition Statistics: Approximately 5-7% of EUIPO applications face opposition, slightly higher than USPTO due to the dense European trademark landscape.

5. Registration

If no opposition filed: Registration occurs automatically when the opposition period expires. The EUIPO publishes the registration and issues an electronic certificate at no additional cost.

Certificate includes:

• Registration number
• Registration date
• Mark representation
• Registered goods and services
• Owner details

EUIPO Process Advantages

The EUIPO system offers several efficiency advantages:

1. No relative grounds examination: Reduces initial examination burden (but means you should conduct your own comprehensive searches)
2. Automatic registration: No final paperwork required if unopposed
3. Transparent timelines: Well-defined Fast Track option provides predictability
4. Electronic certificates: Immediate access to registration certificate upon issuance

Examination Phases Explained

Both USPTO and EUIPO conduct multi-stage examinations, but their scope and approach differ significantly.

Examination Comparison

Formalities Check Details

The formalities examination verifies basic application completeness and compliance:

Requirements Checked:

• Applicant information complete and accurate
• Owner's legal status clearly stated
• Mark representation meets technical requirements
• Goods and services properly classified
• Correct fees paid for all classes
• Filing basis properly stated (USPTO only)
• Specimen submitted (USPTO use-based only)

Common Formalities Issues:

• Incorrect or unclear mark representation
• Vague goods/services descriptions
• Missing owner address or signature
• Insufficient fees paid
• Improper specimen (shows logo but applied for word mark)

Absolute Grounds Examination

Absolute grounds relate to inherent characteristics of the mark itself, regardless of other registrations:

Key Absolute Grounds for Refusal:

1. Lack of Distinctiveness: Mark is not capable of distinguishing goods/services from others

   • Example: Generic shapes, common symbols without distinctive character

2. Descriptiveness: Mark directly describes characteristics, quality, quantity, intended purpose, value, or geographic origin

   • Example: "SOFT" for pillows, "FAST DELIVERY" for courier services

3. Generic Terms: Mark is the common name in the relevant trade

   • Example: "TABLET" for tablet computers, "HOTEL" for lodging services

4. Deceptive: Mark is misleading about nature, quality, or geographic origin

   • Example: "SWISS MADE" for goods made in China

5. Prohibited Elements: Flags, official symbols, offensive terms, royal insignia

   • Example: National flags, Red Cross symbol

6. Functional Features: Shape marks where the shape is dictated by technical function

   • Example: Shape of a tool that must be that shape to function

Examiner's Analysis: Examiners assess these factors from the perspective of average consumers in the relevant market. Context matters—"APPLE" is descriptive for fruit but arbitrary for computers.

Relative Grounds Examination

Relative grounds involve conflicts with existing trademark rights:

USPTO Approach: Examining attorneys proactively search the USPTO database and will refuse registration if they find:

• Identical or confusingly similar marks
• In related goods/services classes
• That could cause consumer confusion

The examiner issues a likelihood of confusion refusal, forcing you to argue against the conflict or amend your application.

EUIPO Approach: The EUIPO does not examine relative grounds during initial review. The burden falls on prior rights holders to monitor publications and file oppositions if concerned.

Strategic Implication: EUIPO applicants must conduct their own comprehensive clearance searches because the office won't catch conflicts. USPTO applicants benefit from official conflict checking but face more office actions.

Application Status Tracking

Both trademark offices provide online portals for monitoring application status in real-time.

USPTO: Trademark Status & Document Retrieval (TSDR)

Access: uspto.gov/trademarks/search/ → Search by serial number

Available Information:

• Current status and status date
• Complete prosecution history
• All filed documents (application, office actions, responses, specimens)
• Important dates and deadlines
• Examiner assignment details
• Opposition and cancellation proceedings (if any)

EUIPO: User Area

Access: euipo.europa.eu → eSearch Plus or User Area login

Available Information:

• Current status in workflow
• Examination progress
• Published documents
• Opposition notices
• Registration certificate (upon registration)
• Renewal dates and payment history

Common Status Codes

USPTO Status Codes

EUIPO Status Codes

Setting Up Monitoring

USPTO:

• Subscribe to status updates at uspto.gov/trademarks/status
• Emails sent for major status changes
• Manual TSDR checks recommended for time-sensitive periods

EUIPO:

• Create User Area account and link your application
• Enable email notifications for all status changes
• Automatic alerts for oppositions, examination decisions, and registration

Publication for Opposition

Publication serves as public notice of your pending registration and opens a window for third parties to challenge your mark.

What Publication Means

When your trademark application is published, it signifies:

1. Approval for registration: The examining office found no substantive issues
2. Public notice: Your mark is now visible to all interested parties
3. Opposition window opens: Third parties with prior rights may challenge registration
4. Not yet registered: Publication does not grant registration rights

Publication Venues

USPTO: Trademark Official Gazette (TMOG)

• Publication schedule: Weekly, every Tuesday
• Format: Online publication at uspto.gov/trademarks/official-gazette
• Content: Mark image, serial number, owner, goods/services, filing date
• Searchable: Fully searchable database of all published marks

EUIPO: EU Trade Marks Bulletin

• Publication schedule: Daily online updates
• Format: Online at euipo.europa.eu
• Languages: Published in all 24 official EU languages
• Content: Mark representation, application number, owner, goods/services, dates

Who Can Oppose

Eligible Opponents:

Opposition Period Duration

USPTO: 30 days from publication date, with possible extensions:

• Extension requests: Can request up to five 30-day extensions (150 days total)
• Requirement: Must show good cause for extension
• Fee: $100-$200 per extension request

EUIPO: 3 months from publication date (non-extendable)

• No extensions: Opposition must be filed within 3-month window
• Cooling-off period: Parties can request negotiations, suspending proceedings

Opposition Statistics

USPTO: ~2-3% of published applications face opposition

EUIPO: ~5-7% of published applications face opposition (higher due to denser European trademark landscape)

Most applications proceed to registration without challenge, but opposition risk increases for:

• Marks in crowded categories (fashion, beverages, technology)
• Marks similar to famous brands
• Descriptive marks that received conditional approval

If No Opposition Filed

When the opposition period closes without challenge, your application proceeds automatically toward registration.

EUIPO: Automatic Registration

Process:

1. Opposition period expires (3 months after publication)
2. EUIPO automatically processes registration (no additional steps required)
3. Registration published in EU Trade Marks Bulletin
4. Electronic certificate generated and available in User Area
5. Owner receives email notification with registration details

Timeline: Registration typically occurs within 2-4 weeks after opposition period expiration.

Cost: Registration is included in your original filing fee—no additional charges.

USPTO: Use-Based Applications

Process:

1. Opposition period expires (30 days after publication, plus any extensions)
2. USPTO processes registration
3. Registration certificate issued electronically via TSDR
4. Owner receives email with link to certificate

Timeline: 3-4 months after opposition period closes.

No additional action required for use-based applications.

USPTO: Intent-to-Use Applications

Process differs significantly:

1. Opposition period expires
2. USPTO issues Notice of Allowance (NOT registration)
3. Applicant must file Statement of Use proving commercial use within 6 months
4. USPTO reviews Statement of Use
5. If acceptable, registration issues

Critical Distinction: ITU applications do not automatically register after publication. You must prove you've begun using the mark in commerce before registration will issue. (See Intent-to-Use Timeline section below.)

Receiving Your Trademark Registration

Registration marks the official beginning of your exclusive trademark rights and provides legal benefits beyond common law use rights.

What You Receive

USPTO Registration Certificate

Delivery Method: Electronic certificate uploaded to TSDR system

Certificate Contents:

• Registration number (format: "Reg. No. X,XXX,XXX")
• Registration date (official date your rights begin)
• Mark representation (exactly as registered)
• Registered goods and services (as approved)
• Owner information
• Filing date and serial number
• Filing basis (use in commerce or intent-to-use)
• Registration type (Principal Register or Supplemental Register)

Access: Download anytime from TSDR using your serial or registration number

Physical Copy: Available upon request for an additional fee ($10 for presentation copy)

EUIPO Registration Certificate

Delivery Method: Electronic certificate in User Area

Certificate Contents:

• Registration number (format: "EU Trade Mark No. XXXXXXXX")
• Registration date
• Mark representation
• Registered goods and services (by class)
• Owner details
• Priority date and claims
• Filing date and application number

Languages: Available in the filing language and English

Physical Copy: Not issued—electronic certificate is official version

When Rights Begin

Registration Date = Rights Effective Date: Your exclusive rights officially begin on your registration date.

Retroactive Priority: Upon registration, your rights retroactively extend to your filing date for priority purposes. This means you have priority over:

• Applications filed after your filing date
• Uses that began after your filing date (in enforcement actions)

Using the ® Symbol

Once registered, you may use the ® symbol to indicate registered trademark status:

Proper Use:

• Place ® immediately adjacent to your mark: BRANDNAME®
• Acceptable variations: BRANDNAME® or BRAND NAME™
• Use consistently in marketing materials, packaging, and web properties

Legal Requirements:

• United States: Using ® on unregistered marks may constitute fraud
• European Union: Using ® on unregistered marks can be a civil or criminal offense
• Best practice: Only use ® after registration issues; use ™ for unregistered marks

Certificate Accuracy Check

Immediately review your certificate upon receipt for accuracy:

Check These Elements:

• Owner name and address
• Mark representation (correct spelling, design elements)
• Goods and services descriptions
• Classification
• Filing and registration dates

If Errors Exist: File correction requests immediately:

• USPTO: Section 7 Request for Amendment using TEAS form
• EUIPO: Correction request via User Area

Corrections are easier immediately after registration than years later.

Post-Registration Obligations

Registration creates ongoing maintenance obligations:

USPTO Maintenance Deadlines:

• Years 5-6: Section 8 Declaration of Continued Use + Section 15 Declaration of Incontestability
• Years 9-10: Section 8 Declaration + Section 9 Renewal
• Every 10 years thereafter: Section 8 Declaration + Section 9 Renewal

EUIPO Maintenance:

• Year 10: Renewal required
• Every 10 years thereafter: Renewal required

Missing maintenance deadlines results in cancellation. Chapter 19 covers maintenance requirements in detail.

Timeline Variations: What Speeds Up or Delays Registration

While average timelines provide useful planning guidance, actual registration duration varies significantly based on multiple factors.

Factors That Speed Up Registration

Factors That Delay Registration

Office Action Impact

Office actions represent the single biggest variable in registration timeline:

First Office Action: 90% of applications receive at least one office action, adding 6-12 months to the process depending on:

• Response time (you have up to 6 months to respond)
• Complexity of issues raised
• Quality and completeness of your response

Second Office Action: If your first response doesn't fully resolve issues, a second office action (typically "final") adds another 6-12 months.

Appeals: Appealing to TTAB (USPTO) or Board of Appeal (EUIPO) adds 18-36 months.

Strategic Timeline Management

To Minimize Delays:

1. Hire experienced counsel: Trademark attorneys reduce office action likelihood through proper preparation
2. Conduct comprehensive clearance searches: Avoid likelihood of confusion refusals
3. Choose strong, distinctive marks: Avoid descriptiveness and genericness issues
4. Use pre-approved descriptions: Reduce classification and identification issues
5. Respond to office actions quickly: Don't wait until the deadline; respond within 30-45 days
6. Provide complete responses: Address every issue raised comprehensively the first time

Realistic Expectations:

• Best case (no issues): 8-12 months (EUIPO Fast Track), 10-14 months (USPTO)
• Average case (one office action): 14-18 months (both offices)
• Complex case (multiple office actions): 18-36 months
• Opposed/appealed: 24-48 months

Intent-to-Use Applications: Special Timeline Considerations (USPTO)

Intent-to-use (ITU) applications follow a different path after the opposition period, requiring proof of commercial use before registration issues.

What Makes ITU Different

Standard use-based application: File → Examine → Publish → Register (12-18 months)

Intent-to-use application: File → Examine → Publish → Notice of Allowance → File Statement of Use → Register (18-48+ months)

The additional step—proving commercial use—extends the process and creates ongoing obligations.

Notice of Allowance

What It Means: Your mark has been examined, approved for publication, survived the opposition period, and is allowed for registration pending proof of use.

What It's Not: A registration. You have no enforceable rights yet.

What You Receive:

• Official notice from USPTO
• Allowance date
• Deadline for filing Statement of Use (6 months from allowance date)
• Instructions for filing Statement of Use
• Extension request information

Statement of Use Requirements

To register an ITU mark, you must file a Statement of Use proving you've begun using the mark in commerce:

Required Elements:

1. Statement of Use form (TEAS filing)
2. Specimen showing actual use of mark in commerce
3. Use dates: Date of first use anywhere, date of first use in commerce
4. Fee: $100 per class
5. Verification: Sworn statement of use facts

Use Requirements: "Use in commerce" means:

• For goods: Mark appears on goods, packaging, or labels, AND goods are sold/transported in interstate or international commerce
• For services: Mark used in marketing/advertising services, AND services are rendered in interstate or international commerce

Specimen Standards: Same as use-based applications:

• For goods: Labels, tags, packaging showing mark on actual goods
• For services: Website, brochures, advertisements showing mark with services

Extension of Time to File Statement of Use

Initial Deadline: 6 months from Notice of Allowance date

Extensions Available: Five 6-month extensions (up to 3 years total)

Extension Requirements:

• First extension: Request filed before initial 6-month deadline, state you still have bona fide intent to use, pay $125 per class
• Subsequent extensions: Same as first extension, filed before previous extension expires
• Fifth extension: Must show "extraordinary circumstances" preventing use

Maximum Total Timeline: 3 years from Notice of Allowance to file Statement of Use.

ITU Timeline Example

Total time from filing to registration: 27 months (compared to 12-18 months for use-based)

Strategic ITU Considerations

Advantages of ITU Filing:

• Secure filing date before launching product/service
• Protect brand during development phase
• Avoid rushed product launches to meet use requirements

Disadvantages:

• Longer timeline to registration (2-3+ years typical)
• Additional costs ($100 per class for SOU, $125 per class per extension)
• Risk of never achieving use within 3-year window
• No enforceable rights until registration issues

Best Practices:

• Only file ITU if you genuinely plan to use the mark within 2-3 years
• Budget for extension costs if product development may take longer
• Begin using mark as soon as commercially feasible
• File SOU immediately once use begins (don't wait for deadline)

Frequently Asked Questions

Timeline & Process

How long does trademark registration really take?

Average timelines are 12-18 months for USPTO and 4-6 months for EUIPO, but these are best-case scenarios. Approximately 90% of USPTO applications receive at least one office action, extending timelines to 14-24 months. Opposition adds another 12-24 months. EUIPO Fast Track applications can register in 4 months if unopposed, while standard applications take 5-6 months. Complex cases, appeals, or oppositions can extend either jurisdiction to 24-48 months.

Can I expedite my trademark application?

The USPTO does not offer general expedited examination. The EUIPO offers Fast Track processing (4 months vs 5-6 months) if you use only pre-approved terms from the Harmonised Database. The time savings is modest but predictable. Neither office offers rush processing for standard applications. Your best strategy for faster registration is filing a complete, accurate application with a strong mark to avoid office actions.

What's the difference between filing date and registration date?

Your filing date is when the trademark office receives your application and assigns you priority—this date determines who has priority in conflicts. Your registration date is when your mark officially registers and your exclusive rights begin. The gap between these dates is typically 12-18 months. Importantly, upon registration, your rights retroactively extend to your filing date for priority purposes.

Why does examination take so long if it's mostly automated?

While initial formalities checks are automated, substantive examination requires human review by trained trademark attorneys. Examiners must search databases for conflicts, evaluate likelihood of confusion (a fact-intensive legal analysis), assess mark distinctiveness in context, research foreign language meanings, and review specimens. Each examining attorney handles hundreds of applications simultaneously. The 3-4 month wait for USPTO assignment reflects application volume and staffing levels, not examination complexity.

Status Tracking

How do I check my trademark application status?

USPTO: Visit uspto.gov/trademarks and search TSDR by your serial number. EUIPO: Log into your User Area at euipo.europa.eu or use eSearch Plus to search by application number. Both systems update in real-time and provide complete prosecution histories including all filed documents, office actions, deadlines, and status changes.

What does "Assigned to Examiner" status mean?

This status indicates an examining attorney has been assigned to review your application and will begin substantive examination. You should expect an office action or approval for publication within 2-3 months. During this period, check TSDR every 2-3 weeks for updates. The examiner may contact you by email or phone for minor clarifications before issuing a formal office action.

Will the USPTO notify me of status changes?

The USPTO sends email notifications for major events (office actions, approvals, registrations) to all email addresses of record. However, the notification system is not foolproof—emails may go to spam or be delayed. You remain responsible for monitoring deadlines. We recommend checking TSDR manually every 2-3 weeks during active examination periods and setting calendar reminders for response deadlines.

Can I contact the examining attorney directly?

Yes. Once your application reaches "Assigned to Examiner" status, you can find the attorney's name, phone number, and email in TSDR. Examining attorneys often welcome brief calls to discuss potential issues before issuing formal office actions. If you're represented by counsel, your attorney should make these contacts. For EUIPO, direct examiner contact is less common; communication is primarily written through the User Area.

Publication & Registration

What happens during the opposition period?

Your approved mark is published in the Official Gazette (USPTO) or EU Trade Marks Bulletin (EUIPO) for public review. Third parties who believe they'll be harmed by your registration have 30 days (USPTO) or 3 months (EUIPO) to file an opposition. During this period, your application status shows "Published for Opposition." Fewer than 3-5% of applications face opposition. If no opposition is filed, your application automatically proceeds to registration.

Can I use my trademark before it registers?

Yes, you can use your trademark during the application process. In fact, if you filed on a use-based filing basis, you're already using it. You may mark goods or marketing materials with "™" (for trademarks) or "℠" (for service marks) to indicate pending status. However, you cannot use the ® symbol until registration officially issues. Your legal rights during the pending period are limited—registration provides significantly stronger protections.

How do I download my registration certificate?

USPTO: Log into TSDR using your serial or registration number. Navigate to the "Trademark Document Retrieval" section and click on "Registration Certificate" when available. Download and save the PDF. EUIPO: Log into your User Area, select your trademark, and download the registration certificate from the documents section. Both offices send email notifications with direct links when certificates are available.

What if someone opposes my trademark?

If an opposition is filed, you'll receive notice from the USPTO's Trademark Trial and Appeal Board (TTAB) or EUIPO's Opposition Division. You'll have 40 days (USPTO) or 2 months (EUIPO) to file a response. Opposition proceedings are complex and require legal expertise—strongly consider hiring trademark counsel. Proceedings typically take 12-24 months. Outcomes include: opposition denied (you register), opposition sustained (your application is refused), or settlement (parties reach agreement, often involving coexistence or withdrawal).

What's Next

You've successfully navigated the registration process and understand what to expect at each stage—but the journey doesn't end with filing. The vast majority of applications receive at least one office action requiring response, and understanding how to address examining attorney objections effectively determines whether your mark registers.

Chapter 11 explains how to respond to office actions, covering the most common refusals (likelihood of confusion, descriptiveness, specimen issues) and providing practical response strategies to overcome objections and secure registration.