Trademark Registration & Brand Protection

The trademark you skipped is the one that comes back to bite you.

Most early-stage brands file the trademark only after a problem - a confusingly similar brand launches, an Amazon copycat starts undercutting you, or an investor asks why the company name is not registered. By that point you have lost a year of priority, you have potentially conflicting third-party rights to fight through, and the cost of the cleanup is multiples of what the original filing would have cost.

The right play is a clearance search and a federal trademark application the moment the brand is real - typically within the first year of operation, well before you have spent six figures on marketing under a name you may not actually be able to keep.

What is included

Clearance search

Comprehensive search of the USPTO register, common-law uses, state registrations, domains, and key social handles. We tell you in writing whether the mark is clear to use and clear to register before you commit a dollar to brand spend.

Federal trademark application

USPTO application drafted with the right basis (use-based or intent-to-use), the right international class(es), and an identification of goods and services that is broad enough to protect you and narrow enough to register.

Office Action responses

Substantive and non-substantive Office Actions - 2(d) likelihood of confusion, descriptiveness, specimen, identification - all responded to within the six-month window with full legal argument and amendments where appropriate.

Statements of Use & Section 8/15 maintenance

For intent-to-use applications, the Statement of Use with proper specimens. For registered marks, the Section 8 declarations at year five, Section 15 incontestability filing, and the year-ten renewals.

Opposition & cancellation

TTAB practice - oppositions to block other applications that conflict with your brand and defenses against oppositions and cancellations filed against you.

Brand monitoring & enforcement

Ongoing monitoring of new USPTO filings, online marketplaces, and domain registrations for confusingly similar uses. Cease-and-desist letters, takedown notices, and platform brand registry enforcement.

International registration

Filings under the Madrid Protocol for streamlined registration in 100-plus member countries, plus direct foreign filings in priority markets that are not Madrid members.

Trademark application strategy meeting at Austin law firm

USPTO Filing Strategy

Our trademark process

Strategy call. We discuss the brand, the goods or services, the geography of use, and the priority markets. We confirm whether the mark is even capable of registration before any search is run.
Clearance. Within five business days you receive a written clearance opinion - go, no-go, or modify. We do not file marks we do not believe will register.
Filing. Application drafted, specimens prepared, and filed with the USPTO. You receive a filing receipt and serial number the same day.
Prosecution. We monitor for the first action, respond to any Office Action within the deadline, and shepherd the mark through publication and registration.
Maintenance & monitoring. Calendar-driven maintenance filings, plus optional monitoring and enforcement on the registered mark.

Common scenarios

The pre-launch brand

You have settled on a name and a logo but you have not opened yet. The right move is an intent-to-use application now - it gives you nationwide priority backdated to filing once the mark is used and approved.

The Amazon brand registry play

You sell on Amazon and you are losing margin to copycats hijacking your listings. Federal registration unlocks Amazon Brand Registry, A+ content, Sponsored Brands, and takedown rights. We typically file with USPTO and enroll the brand in Amazon's Intellectual Property Accelerator track when speed matters.

The Office Action that says you cannot register

You filed yourself or with a flat-fee online service and the USPTO came back with a 2(d) likelihood-of-confusion refusal or a descriptiveness rejection. Most of these are responsive - we draft the legal argument and amendments that either overcome the refusal or restructure the application so it issues.

Why Sterling & Hayes

You get a real trademark practitioner, not a paralegal pushing forms through TEAS. We have prosecuted hundreds of marks through the USPTO, including contested oppositions before the TTAB, and we coordinate trademark work with our intellectual property, contracts, and litigation practices so brand strategy stays joined-up across the business.

Frequently Asked

Trademarks, answered.

How long does federal trademark registration take?

USPTO trademark examination currently runs roughly eight to twelve months from filing to first action, and a clean application typically registers in twelve to eighteen months total. Use-based applications (Section 1(a)) register faster than intent-to-use (Section 1(b)) because there is no later Statement of Use step. Office Actions or oppositions can add three to six months each, and complex prosecutions can run beyond two years.

What are the most common grounds for a USPTO refusal?

By volume, the leading refusals are likelihood of confusion with an existing registration under Section 2(d), mere descriptiveness, genericness, geographic descriptiveness, and specimen problems where the submitted specimen does not show actual trademark use in commerce. Most refusals are responsive and can be overcome with a legal argument, an amendment of the identification of goods, or a substitute specimen.

What is the difference between common law and federal trademark rights?

Common law rights arise automatically from using a mark in commerce and extend only to the geographic area of actual use - typically a single city or region. Federal registration with the USPTO gives nationwide priority, a legal presumption of validity and ownership, the right to use the registered symbol, and the ability to record the mark with U.S. Customs to block infringing imports. The gap between common law and federal is enormous for any business expanding beyond a single city.

How do trademark classes of goods and services work?

The USPTO uses the international Nice Classification system, which divides all goods and services into 45 classes (classes 1-34 for goods, 35-45 for services). You pay a separate filing fee for each class you claim and you are bound by the specific identification of goods and services you choose. Picking the right class and identification is critical - too narrow and you under-protect, too broad and you trigger refusals, oppositions, or maintenance problems later.

How does federal registration help with Amazon Brand Registry?

Amazon Brand Registry requires either a registered trademark or a pending application with the USPTO (depending on category and accelerator program) before you can enroll your brand. Once enrolled, you unlock A+ content, Sponsored Brands advertising, Project Zero takedowns, the Transparency anti-counterfeit program, and brand analytics. For e-commerce sellers, registration is effectively the price of entry to Amazon's brand protection tooling.

When should I file internationally?

File internationally when you have either real revenue or planned revenue in a target market within the next 12-24 months. The Madrid Protocol is dramatically more efficient than direct national filings when you are filing in three or more member countries, and it lets you piggy-back on your U.S. registration. Some priority markets - notably Canada in some respects, and several Latin American countries - require direct national filings.

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