What Happens After the Trademark Search? Understanding the Next Steps in Trademark Registration
Written by JLG - July 10, 2025
Once a trademark search is complete and it appears your brand name, logo, or slogan is available, the next step is deciding how to proceed with the registration process. At Jafari Law Group, we walk clients through each stage to help reduce risk and set the foundation for lasting brand protection.
Filing the Trademark Application
If the trademark search indicates that your mark is likely registrable, the next step is preparing and submitting the trademark application with the United States Patent and Trademark Office (USPTO). This involves identifying the correct owner, selecting the appropriate filing basis (such as actual use or intent to use), and providing a clear description of the goods or services associated with the mark.
Accuracy and consistency are critical at this stage. Errors in ownership, misclassification, or vague descriptions can cause delays or outright refusals.
USPTO Examination Process
Once the application is filed, it is assigned to a USPTO examining attorney. This attorney reviews the application to determine whether it complies with federal law and USPTO regulations. Common issues raised during examination include:
- Likelihood of confusion with an existing mark
- Descriptiveness or genericness of the mark
- Incomplete or unclear descriptions of goods/services
- Specimen or use-based filing deficiencies
If any issues are found, the USPTO will issue an Office Action, which must be responded to within a set deadline. Failing to respond properly or on time can result in the application being abandoned.
Responding to Office Actions
If an Office Action is issued, our team at Jafari Law Group prepares a response based on the substance of the objection. This might include legal arguments, clarifications, or amended descriptions. Whether the refusal is procedural or substantive, we review it carefully and guide you through your options.
Responding effectively can often keep the application moving forward without requiring an appeal or refile.
Publication for Opposition
If the USPTO approves the application, it enters a 30-day publication period in the Trademark Official Gazette. During this time, third parties can file an opposition if they believe your mark conflicts with their rights.
If no oppositions are filed, or if any filed opposition is resolved in your favor, the application moves toward registration.
Registration or Notice of Allowance
The final step depends on your filing basis:
- Use-based applications are registered shortly after the opposition period ends.
- Intent-to-use applications receive a Notice of Allowance, requiring you to submit a Statement of Use before registration can be completed.
At this point, your trademark is officially registered, and you gain exclusive rights to use the mark in connection with the listed goods or services.
Ongoing Maintenance
Trademark protection is not indefinite without action. Registrants must file maintenance documents at specific intervals, typically at the five-year, ten-year, and every ten years thereafter. Failure to file can result in cancellation.
Our firm offers ongoing monitoring and docketing services to help ensure deadlines are not missed and that your rights remain secure.
Get Help from Jafari Law Group
Filing a trademark application is more than just filling out a form. Each step, from the initial search to maintenance, can impact your ability to protect and enforce your brand. At Jafari Law Group, we guide businesses through the full trademark lifecycle with clarity and strategy.
If you are ready to move forward after your search, or if you have questions about your trademark’s next step, contact us to schedule a free consultation.