An Overview of the Different Types of Federal Trademark Applications

Federal Trademark Applications In the US

Trademarks serve as a unique identifier for businesses, enabling consumers to distinguish between different products and services. They are not just logos or brand names; they can also be slogans, sounds, colors, or any combination of these elements that create brand recognition.

The primary legal framework for trademarks in the United States is the Lanham Act. Enacted in 1946, it provides the statutory basis for the registration, protection, and enforcement of trademarks. The Act covers various aspects, including the definition of a trademark, grounds for refusal, infringement, dilution, and the remedies available for trademark violations.

The USPTO is the federal agency responsible for examining and registering trademarks. It maintains a database of existing trademarks, which is essential for conducting trademark searches to determine the availability of a mark.

Trademarks are valuable assets, often integral to a company’s identity and reputation. Understanding the various types of applications available is essential for choosing the most appropriate path for trademark registration. Here is a detailed overview of these federal trademark application types:

Intent to Use Applications (Section 1(b)):

  • Purpose: For entities planning to use a trademark in commerce but have not yet started.
  • Process: (1) File based on a bona fide intention to use the trademark; (2) After initial approval, the USPTO issues a Notice of Allowance; (3)  The applicant must submit a Statement of Use within 36 months, showing actual use in commerce.
  • Advantages: Secures rights before actual use, helpful in strategic branding.

Actual Use Applications (Section 1(a)):

  • Purpose: For entities planning to use a trademark in commerce but have not yet started.
  • Requirements: (1) Applicants must provide proof of use in commerce; (2) Includes submitting specimens showing the trademark as used.
  • Advantages: Direct path to registration for active brands.

Foreign Application-Based (Section 44(d)):

  • Purpose: For those who have filed a trademark application in another country within the last six months.
  • Benefits: (1) U.S. application can claim priority based on the foreign application’s filing date; (2) Useful for global brand protection strategies.
  • Requirements: Must provide evidence of foreign application.

Foreign Registration-Based (Section 44(e)):

  • Purpose: For entities with an existing trademark registration in a foreign country.
  • Process: (1) Does not require prior use of the trademark in the U.S.; (2) Applicants must submit a copy of the foreign registration.
  • Benefits: Facilitates international brands entering the U.S. market.

Madrid Protocol Applications (Section 66(a)):

  • Scope: For entities with an existing trademark registration in a foreign country.
  • Requirements: (1) Requires a base application or registration in the applicant’s home country.; (2) Declaration of a bona fide intention to use the trademark in the U.S.
  • Advantages: Streamlines global trademark registration processes.

Trademark Application Process

  • Trademark Search: Conducting a comprehensive search in the USPTO database and other sources is crucial to ensure the mark is not already in use or too similar to an existing one.
  • Filing the Application: Prepare and submit the application, including details about the mark, goods/services it will represent, and the basis for filing (e.g., Intent to Use or Actual Use).
  • Examination by USPTO: After filing, a USPTO examining attorney reviews the application for compliance with trademark laws and regulations.
  • Responding to Office Actions: If issues arise, the USPTO issues an Office Action. Responding effectively is crucial for overcoming objections.
  • Publication and Opposition: Once approved, the mark is published in the Official Gazette, allowing others to oppose the registration if they believe it infringes their rights.
  • Registration: If there are no oppositions, or if the applicant successfully overcomes them, the trademark is registered.

Maintenance and Enforcement

After registration, maintaining the trademark is essential. This includes filing periodic declarations of use and renewals. Trademark owners must also monitor and enforce their rights against unauthorized use to prevent infringement and dilution.

Challenges to USPTO Trademark Applications

Each trademark application type has unique requirements and advantages, making it imperative for trademark applicants to understand the nuances to choose the most suitable pathway for their needs. Additionally, providing accurate and appropriate product and service descriptions in trademark applications is vital to prevent legal complications or refusals. Common reasons for trademark registration refusal include likelihood of confusion with existing trademarks, descriptiveness, that the trademark is generic and non-distinctive, or that the trademark is being used in a ornamental way and does not function as a trademark.

Furthermore, understanding the legal framework surrounding trademarks, such as the Lanham Act, is crucial. The Lanham Act provides the legal basis for federal trademark protection in the U.S., governing aspects like registration, infringement, and false advertising. Compliance with this act is mandatory for all federal trademark applications.

The process of trademark registration through the United States Patent and Trademark Office (USPTO) involves several steps, including conducting a trademark search, preparing and filing the application, responding to USPTO actions, and maintaining the registration once granted. Trademark applicants may face challenges such as Office Actions, which are official letters from the USPTO raising issues with the application. Responding effectively to Office Actions is essential for the successful registration of a trademark.


In conclusion, the choice of federal trademark application type depends on various factors, including the current use of the trademark, the geographical scope of business operations, and future plans for brand expansion. If you need assistance navigating the complexities of the federal trademark application process and to ensure compliance with all legal requirements, our trademark attorney can assist. Please reach out to our law office by completing our online contact for or giving us a call.