How to Register a Trade Mark in the United States with the USPTO

Registering a trade mark in the United States is governed by the federal Lanham Act (the Trademark Act of 1946, as amended) and administered by the United States Patent and Trademark Office (USPTO). For a foreign business, the US system has several features that differ markedly from many other jurisdictions: a genuine emphasis on use of the mark in commerce, a mandatory US-licensed attorney requirement for foreign-domiciled applicants, and an opposition window that sits after examination rather than before. This guide walks through who can apply, how to clear and classify a mark, the examination and opposition process, rough timing, renewal, and the practical risks that catch overseas filers out. It covers both filing directly with the USPTO and designating the United States through the Madrid Protocol.

This is general information, not legal advice. US trade mark practice carries real procedural traps, and the consequences of getting the filing basis or the specimen wrong can be severe. Where your situation involves genuine nuance, you should consult a vetted local firm.

Who can apply

Any natural person or legal entity that owns, or has a bona fide intention to use, a trade mark in US commerce can apply. Commerce here means commerce that the US Congress can regulate, which in practice means interstate or foreign commerce connected to the United States. Ownership matters: the applicant must be the party that controls the nature and quality of the goods or services sold under the mark.

The single most important point for an overseas business is the US-licensed attorney requirement. Under a USPTO rule in force since 2019, applicants, registrants, and parties whose domicile is outside the United States or its territories must be represented before the USPTO by an attorney who is licensed to practise law in the United States. This applies to direct filings from the outset. For applications that designate the United States through the Madrid Protocol under Section 66(a), the position is set out in the USPTO's examination guidance: under the USPTO's 2019 rule, foreign-domiciled Section 66(a) applicants generally must appoint a US-licensed attorney when the USPTO issues an Office action requiring a response, at which stage you will need US counsel to respond. The rule also requires every filer to provide a domicile address. Because the precise trigger points and exceptions are set by USPTO rule and guidance, confirm the current position in the USPTO's examination guide rather than relying on any single summary.

Choosing a filing basis

A US application must rest on at least one statutory filing basis, and the basis you choose shapes the whole process. The main routes are:

• Section 1(a), use in commerce: the mark is already in use in US commerce, and you file a specimen showing that use.
• Section 1(b), intent to use: you have a bona fide intention to use the mark in US commerce but have not started yet. You can secure a filing date now, but the registration will not issue until you have shown actual use through an allegation of use.
• Section 44(d) and 44(e): available to applicants with a qualifying foreign application or registration in their home country, allowing them to register in the US without first proving use, although use is still ultimately expected.
• Section 66(a): an application that designates the United States as part of an international registration under the Madrid Protocol.

The use requirement is the feature most likely to surprise applicants from first-to-file jurisdictions. Even where you register via Section 44 or Section 66(a) without proving use at the outset, the US system expects genuine use, and a registration can later be challenged or cancelled if the mark was never genuinely used in US commerce. Declarations of use and intent are made under penalty of perjury, and inaccurate claims of use are a recurring ground for later attack.

Searching and clearance

The USPTO does not clear your mark for you before you file, and it will not warn you of risks outside its own register. Clearance is your responsibility. A sensible search before filing looks at:

• The USPTO register itself, for identical and confusingly similar marks in related classes.
• Common-law use, because US rights can arise from use alone, even without registration. A business using an unregistered mark may hold prior rights in a geographic area, which a register-only search will not reveal.
• State trade mark registers and trading names.

This common-law dimension is a genuine point of US difference. Unlike purely register-based systems, prior unregistered use can defeat or limit a later federal registration. A clearance search that ignores common-law use gives false comfort. Where the stakes are meaningful, a professional clearance opinion from a vetted local firm is worth the cost.

Classification and US identification practice

The USPTO adopts the international Nice Classification, the same 45-class system applied under the Madrid Protocol and in jurisdictions such as the European Union and the United Kingdom. There is no peculiar local subclass grid of the kind used in China; classification follows the current Nice version. A new edition of the Nice Classification is issued every three years, with annual interim versions in between, and the USPTO updates to the current version. For the specific edition in force, attribute the position to the USPTO and WIPO announcements: as of 1 January 2026, the 13th Edition (version 2026) is in effect. Because these versions change on a published schedule, confirm the current edition with the USPTO or WIPO before relying on a particular version.

What does differ is how strict the USPTO is about the wording of the goods and services. US examiners generally require an identification that is specific, definite, clear, accurate, and concise. Broad class headings and vague catch-all wording that may pass elsewhere are routinely rejected in the United States. The USPTO publishes a free Trademark ID Manual of pre-approved descriptions, and using that language is the most reliable way to avoid an objection. This matters acutely for Madrid Protocol filings, where the broad identifications accepted by other offices frequently draw a US refusal demanding that they be narrowed.

You pay an official fee per class, and the USPTO has moved to a fee structure that can add surcharges where identifications fall outside the pre-approved manual or where applications are lengthy or free-form. Because fees and surcharges change and are version-specific, confirm the current amounts on the USPTO official fee page before you file rather than relying on any figure quoted second-hand.

The application and examination process

After you file, the USPTO checks that minimum filing requirements are met, assigns a serial number, and in time forwards the application to an examining attorney. Examination is substantive. The examining attorney reviews the application for compliance with the statute and rules, searches the register for conflicting marks, and assesses the mark itself for issues such as a likelihood of confusion with a prior mark, mere descriptiveness, or other statutory bars.

If the examiner raises objections, the USPTO issues an office action setting out the refusals or requirements. You then have a set period to respond, and for foreign-domiciled applicants the response must be filed through US counsel. Common office actions concern the identification of goods and services, the specimen of use, a likelihood of confusion with an existing registration, or descriptiveness. Office actions can often be overcome with argument or amendment, but they add time and cost.

If the examiner raises no objection, or you overcome all objections, the mark is approved for publication in the Trademark Official Gazette, the USPTO's weekly electronic publication.

Publication and opposition

US opposition comes after examination, not before. Once your mark publishes in the Trademark Official Gazette, there is, according to the USPTO and the Trademark Trial and Appeal Board (TTAB), a 30-day window in which any party who believes it would be damaged by registration may file an opposition, or request an extension of time to oppose. A request for an extension of time can extend the period up to 180 days from publication. Oppositions are heard by the TTAB, a panel of administrative trademark judges, in a proceeding that resembles streamlined federal litigation, with pleadings, discovery, and evidence.

If no opposition is filed and the basis permits, the path to registration is relatively short. For use-based and Madrid filings that have cleared examination, registration generally follows within a few months of publication. For an intent-to-use application under Section 1(b), publication leads not to registration but to a notice of allowance, after which you must file an allegation of use (and, if needed, requests for extensions) before the registration certificate issues.

Roughly how long it takes

Timing varies with the USPTO's workload, the filing basis, and whether any office action or opposition arises. As a broad guide, expect the following stages, but treat each as indicative rather than guaranteed. According to USPTO general timelines, it can take roughly three to four months from one stage to the next; these are estimates that vary with current processing times.

A straightforward, unopposed application with no office actions can move from filing to registration in well under a year, but applications that draw refusals, that rest on intent to use, or that are opposed can take considerably longer. Plan on a year or more if any complication arises. Because processing times shift, treat all of the above as estimates and check current USPTO pendency figures rather than relying on fixed durations.

Filing through the Madrid Protocol

If you hold a home-country trade mark application or registration, you can seek US protection by filing an international application through your home (office of origin) and designating the United States. The application reaches the USPTO as a Section 66(a) request for extension of protection. The World Intellectual Property Organization (WIPO) administers the international register; the USPTO examines the US designation under its own substantive standards.

The Madrid route can be efficient for businesses filing across several countries at once, but it carries US-specific features to plan for:

• US examination still applies in full. The USPTO will examine the designation and can issue a provisional refusal, very commonly over the breadth of the goods and services description. Identifications acceptable elsewhere are frequently too broad for the USPTO.
• US counsel is required from the point of any refusal. If the USPTO issues an Office action requiring a response, a foreign-domiciled holder generally must appoint a US-licensed attorney to respond.
• Central attack risk. According to WIPO and USPTO Madrid materials, for its first five years the international registration depends on the home (basic) mark. If the basic mark falls away in that period, the US designation can fall with it. A transformation mechanism may then allow conversion to a national application, but transformation must generally be requested within the prescribed period (generally three months of the international registration's cancellation) and must be requested into each designated country separately.
• A US declaration of use is required to maintain the resulting protection, on the same post-registration timetable as a directly filed registration.

For many foreign businesses the practical choice is between the convenience and central management of Madrid and the flexibility of a direct US filing tailored to US identification practice from day one. A vetted local firm can advise which route fits your portfolio and budget. See our overview of the Madrid Protocol for the wider international picture.

Maintaining and renewing your registration

A US registration is not maintained by a single renewal. You must file periodic declarations confirming that the mark is still in use (or that any non-use is excusable), and you must renew. The key post-registration filings are:

• A declaration of use (or of excusable nonuse) under Section 8, generally due between the fifth and sixth anniversaries of registration, with a six-month grace period available for an additional fee. Failure to file by the deadline, including the six-month grace period, results in cancellation of the registration.
• A combined declaration of use and renewal under Sections 8 and 9, due between the ninth and tenth anniversaries of registration, and every ten years thereafter, again with a six-month grace period available for a surcharge.
• Optionally, a Section 15 declaration of incontestability, which can strengthen the registration once the mark has been in continuous use for five years.

Each maintenance filing requires a current specimen showing real use and a fee per class. Missing a maintenance deadline, even by oversight, results in cancellation of the registration once the grace period has expired, and the grace periods are short. Madrid-based Section 66(a) registrations follow the same US use-declaration regime to keep the US protection alive, separately from renewing the underlying international registration at WIPO. Confirm current deadlines and fees on the USPTO official maintenance and fee pages.

Practical risks for a foreign business

A handful of issues account for most of the trouble overseas applicants run into:

• Treating registration as the end of the story. US rights live or die on genuine use. A registration unsupported by real use in US commerce is vulnerable to cancellation, and declarations of use are made under penalty of perjury.
• Overbroad goods and services. Descriptions accepted at home are often refused in the US. Drafting to USPTO identification practice from the outset, ideally using the Trademark ID Manual, avoids delay and surcharges.
• Specimen problems. The USPTO is exacting about what counts as a valid specimen of use, and mock-ups or merely promotional material are commonly rejected.
• Ignoring common-law rights. A register-only search can miss a prior unregistered user with superior local rights.
• Missing maintenance deadlines. The Section 8 and Section 9 cycle is unforgiving, and a lapse cancels the registration once the grace period has expired.
• Trying to proceed without US counsel. For foreign-domiciled parties this is generally not optional, and self-filed applications routinely run into avoidable refusals.

For comparison with other major systems, see our guides for the European Union, India, and Türkiye. Where your US filing involves any genuine complexity over use, clearance, classification, or an office action, the sensible step is to consult a vetted local firm before you file rather than after a problem arises.