Clearing, Registering, and Policing a Trademark: A Practical Checklist

Intellectual Property > Trademarks | Published 26 November 2023 - Updated 14 July 2025 | UpLaw - uplaw.us

⭐ Phase 1 is worth more than every other phase combined. A name chosen well is cheap to protect forever. A name chosen badly cannot be fixed by any amount of legal work.

Use with Trademarks: A Comprehensive Guide to Selection, Registration, Enforcement, and Disputes and The Trademark Clearance and Enforcement Toolkit.

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Phase 1 — Choosing the mark

☐ Place every candidate on the spectrum:

Category	Protectable?	Example
Generic	⚠ Never	"Coffee" for coffee
Descriptive	⚠ Only with secondary meaning	"Fresh Coffee"
Suggestive	⭐ Immediately	"Jaguar" for cars
Arbitrary	⭐ Immediately	"Apple" for computers
Fanciful	⭐ Strongest	"Kodak"

☐ ⭐ Reject anything generic or descriptive, however well it tests. ⚠ Surnames, geographic terms, and laudatory words ("Best," "Premium") are treated as descriptive.

☐ Prefer a name that requires a moment of thought to connect to the goods.

☐ Check the sound and the plural. ⚠ Marks are compared by sound as well as sight, from memory.

☐ Check translations and transliterations if the market includes non-English speakers.

☐ Confirm the name is not the name of a living person — ⚠ written consent is required under 15 U.S.C. § 1052.

☐ Test whether it functions as a source indicator rather than an ordinary informational phrase. ⚠ "Drive Safely" will be refused; a distinctive tagline will not.

☐ ⭐ Decide who the applicant will be — the operating entity, not a founder personally. ⚠ Filing in the wrong name is a defect that can be fatal.

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Phase 2 — Knockout search

Fast, cheap, before anyone commits emotionally.

☐ Exact string in the federal register, live and dead ☐ Obvious phonetic equivalents and misspellings ☐ Domain availability, including common variants ☐ App store and marketplace seller listings ☐ Social handles ☐ A general web search

⚠ A clean knockout search means "proceed to the full search," not "you are safe."

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Phase 3 — Full clearance

Before signage, packaging, a launch, or any real spend.

☐ Federal applications and registrations — similar in sight, sound, or meaning, across related classes, not just your class ☐ State registrations in every state of operation ☐ Common law uses — business directories, trade publications, association member lists, marketplace sellers, app stores, social handles ☐ Domain registrations, including variations ☐ Design searches if a logo is involved ☐ Foreign registers for every market you will enter

☐ Evaluate each hit rather than abandoning at the first similar result:

• ☐ Are the goods related in consumers' minds? ⚠ Competition is not required
• ☐ Do the marks share the dominant element? ⭐ The first word usually dominates; a shared suffix rarely does
• ☐ Is the shared element weak or crowded? ⭐ A crowded field narrows everyone's scope
• ☐ Is the cited registration actually in use? ⭐ Expungement or reexamination can clear deadwood
• ☐ Is the owner known to enforce?

☐ ⭐ Keep the search report and the reasoning. ⚠ A documented, counsel-reviewed clearance is the best defense to willfulness — and willfulness is what triggers trebling and fees under 15 U.S.C. § 1117.

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Phase 4 — Filing

☐ Choose the basis under 15 U.S.C. § 1051:

• ☐ Use in commerce — already selling; specimens filed now
• ☐ ⭐ Intent to use — filed before launch, securing a priority date; statement of use follows
• ☐ Foreign application or registration as a basis

☐ ⭐ File the word mark in standard characters first. It covers the name in any font, size, or color. Add the design mark separately.

☐ Draft the identification of goods and services carefully:

• ☐ Cover what you sell and what you will sell within the next few years
• ☐ ⚠ Too narrow leaves gaps; too broad invites refusals and later nonuse vulnerability
• ☐ Fees are per class — identify the classes you actually need

☐ Confirm the applicant is the entity that controls quality of the goods or services.

☐ Prepare specimens — ⚠ more applications die here than on any substantive ground:

• ☐ Goods: the mark on the product, its packaging, tags, labels, or a webpage showing the goods with a means to order
• ☐ Services: advertising showing the mark and describing the services
• ☐ ⚠ Not a mockup. Not a logo file. Not a business card for goods.

☐ Review the declaration. ⚠ Signed under penalty of perjury; a knowing material falsehood can void the registration for fraud.

☐ Diary the intent-to-use deadlines — the statement of use and every extension.

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Phase 5 — Prosecution

☐ Expect an office action. ⭐ An initial refusal is normal.

☐ Diary the response deadline immediately. ⚠ It is strict.

☐ Match the response to the refusal:

Refusal	Response options
Likelihood of confusion — 15 U.S.C. § 1052	Distinguish sight, sound, meaning, goods, and channels · amend the identification to avoid overlap · ⭐ obtain a consent or coexistence agreement from the cited registrant · challenge the cited registration for nonuse
Merely descriptive	Argue suggestiveness · submit evidence of acquired distinctiveness · ⚠ amend to the Supplemental Register as a fallback
Primarily merely a surname	Argue other meaning or rareness · acquired distinctiveness
Geographically descriptive	Argue obscurity or no goods/place association
Specimen refusal	Submit a substitute specimen showing actual use
Identification indefinite	Amend to acceptable wording
Failure to function	Show use as a source identifier, not an informational phrase

☐ ⭐ The consent agreement is frequently the fastest path through a confusion refusal, and the Office gives such agreements substantial weight when they explain why confusion is unlikely and describe steps the parties will take.

☐ Appeal to the Trademark Trial and Appeal Board if the refusal is final and worth contesting.

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Phase 6 — Publication, opposition, and registration

☐ Monitor publication and the opposition window.

☐ ⚠ If opposed, treat it as litigation. B&B Hardware v. Hargis Industries, 575 U.S. 138, makes a Board likelihood-of-confusion finding potentially preclusive in later federal court proceedings.

☐ If you are the one opposing, plead every available ground — confusion, descriptiveness, genericness, functionality, lack of bona fide intent, fraud, nonuse, dilution.

☐ On registration, immediately calendar:

• ☐ ⭐ Declaration of continued use between years five and six — 15 U.S.C. § 1058
• ☐ ⭐ Declaration of incontestability after five years of continuous use — 15 U.S.C. § 1065
• ☐ Renewal every ten years — 15 U.S.C. § 1059
• ☐ ⚠ Set reminders at twelve, six, and one month. A missed deadline cancels the registration.

☐ Begin using ® — ⚠ and only after registration issues.

☐ Record the registration with customs if counterfeiting is a risk.

☐ Note the benefits now in force: nationwide constructive use, 15 U.S.C. § 1057 · constructive notice, 15 U.S.C. § 1072 · evidentiary presumptions, 15 U.S.C. § 1115.

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Phase 7 — Policing

☐ ⭐ Set up a watch service covering new applications and market entrants. Catching a conflicting application during the opposition window is far cheaper than confronting an established business three years later.

☐ Search periodically for your mark in marketplaces, app stores, domains, and social platforms.

☐ Keep an enforcement log — every conflict identified, the decision taken, and the reason. ⭐ This record is what defeats a later claim that you slept on your rights.

☐ Maintain a use file — dated specimens for every mark in every class, refreshed annually.

☐ Publish and circulate brand guidelines:

• ☐ Use the mark as an adjective followed by the generic noun
• ☐ ⚠ Never as a verb, never as a plural, never as a possessive
• ☐ Consistent styling, with ® or ™
• ☐ ⭐ Supply a generic term for the category so people have another word to use
• ☐ Correct misuse in the press politely and promptly

☐ ⚠ Genericide starts inside the company. Marketing copy is where it begins.

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Phase 8 — Enforcement, graded

☐ Grade the conflict before writing anything:

Situation	Proportionate response
Identical mark, identical goods, deliberate	⭐ Firm demand; litigation if ignored
Similar mark, related goods, innocent adopter	A measured letter; often a coexistence agreement or a modest change
Similar mark, unrelated goods and channels	⚠ Often no confusion; open a watch file
Descriptive use of a descriptive term	⭐ Usually not actionable — KP Permanent Make-Up v. Lasting Impression I, 543 U.S. 111
Comparative advertising or repair services	Nominative fair use; permitted
Parody used as a product brand	⚠ Ordinary confusion analysis — Jack Daniel's Properties v. VIP Products, 599 U.S. 140
Criticism or a complaint site	⭐ Generally protected; ⚠ enforcement attempts backfire publicly
Domain registered to resell to you	Cybersquatting provisions of 15 U.S.C. § 1125, or domain arbitration
Counterfeits	⭐ Seizure and enhanced remedies — 15 U.S.C. § 1116, 15 U.S.C. § 1117

☐ Write the letter short and specific: identify the registration, identify the use, state the confusion concern in one paragraph, propose a concrete resolution, give a reasonable deadline.

☐ ⚠ Do not overreach. An objectively weak, aggressive demand can produce a declaratory judgment action in the recipient's home forum, a fee award, and publicity that outlasts the dispute.

☐ Consider the alternatives to litigation: a coexistence agreement · a phase-out period · a modest styling change · a consent to registration in exchange for limits · a purchase of the junior mark.

☐ If litigating, plead: infringement under 15 U.S.C. § 1114 · false designation of origin under 15 U.S.C. § 1125 · dilution if the mark is genuinely famous · state claims · and where appropriate cancellation under 15 U.S.C. § 1119.

☐ ⚠ Check territorial reach. Abitron Austria GmbH v. Hetronic International, 600 U.S. 412, limits the Lanham Act to domestic use in commerce.

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Phase 9 — Licensing

☐ ⚠ ⭐ Never license without quality control you actually exercise. Naked licensing can abandon the mark entirely.

☐ Every license must contain:

• ☐ Specific quality standards — materials, specifications, service protocols, training
• ☐ Inspection rights, exercised on a schedule
• ☐ Approval procedures for advertising, packaging, and new uses
• ☐ Reporting and records
• ☐ Correction and termination rights for quality failures
• ☐ ⭐ A recital that all use inures to the licensor's benefit
• ☐ A prohibition on the licensee registering the mark or anything confusingly similar
• ☐ A phase-out period on termination

☐ ⭐ Keep a file proving inspections happened. ⚠ Contract rights never exercised are the paradigm naked licensing case.

☐ ⚠ Check whether the arrangement is a franchise — a license plus a fee plus a marketing plan may be one as a matter of law, triggering disclosure and registration obligations regardless of the label.

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Phase 10 — Assignments and transactions

☐ ⚠ Assign the mark WITH the goodwill of the business — 15 U.S.C. § 1060. An assignment in gross is invalid. ⭐ Recite the goodwill transfer expressly.

☐ Record every assignment, name change, and merger.

☐ ⚠ Do not assign an intent-to-use application before the statement of use except to a successor to the ongoing business.

☐ In diligence, confirm:

• ☐ Record owner matches the operating entity
• ☐ Every maintenance filing was made
• ☐ Current use in every class claimed, with dated specimens
• ☐ Licenses out contain and exercise quality control
• ☐ Foreign filings match the markets served
• ☐ ⭐ Domains, social handles, and app store listings are held by the entity, not an individual
• ☐ No pending oppositions, cancellations, or demand letters

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Phase 11 — International

☐ ⭐ File before you announce. ⚠ Many jurisdictions are first-to-file, and a squatter who reads your press release can block your entry.

☐ File in sales markets and manufacturing countries.

☐ Consider the Madrid Protocol for a single filing across member countries — ⚠ noting the five-year dependence on the home application.

☐ File nationally where Madrid is unavailable or local practice favors it.

☐ Register transliterations and local-language equivalents.

☐ Record with local customs authorities.

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The annual hour

☐ Confirm every deadline is calendared with redundant reminders ☐ File the incontestability declaration at five years ☐ Confirm use across every class claimed ☐ Run the watch search ☐ Review licenses for quality control compliance ☐ Check your own materials for correct trademark usage ☐ Confirm ownership records are accurate ☐ Update the goods and services list against what you actually sell ☐ Recirculate the brand guidelines

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Common mistakes

⚠ Choosing a descriptive name because it explains the business. ⚠ Believing an LLC filing or a domain registration creates trademark rights. ⚠ Skipping clearance and discovering the conflict after the signage. ⚠ Filing in a founder's personal name. ⚠ Submitting a mockup as a specimen. ⚠ Registering only the logo and not the word mark. ⚠ Missing a maintenance deadline. ⚠ Licensing without quality control. ⚠ Assigning the mark without the goodwill. ⚠ Using the mark as a verb in your own marketing. ⚠ Sending aggressive letters over weak claims. ⚠ Ignoring foreign filings until after the launch announcement.

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Special situations

Trade dress

☐ Categorize first. ⭐ Packaging and business décor can be inherently distinctive — Two Pesos v. Taco Cabana, 505 U.S. 763. ⚠ Product design NEVER is — Wal-Mart Stores v. Samara Brothers, 529 U.S. 205 — and always requires secondary meaning. ☐ ⚠ Test functionality first. TrafFix Devices v. Marketing Displays, 532 U.S. 23: a feature essential to the use or purpose, or affecting cost or quality, is unprotectable. An expired utility patent claiming the feature is strong evidence against you. ☐ Define the claimed dress precisely — ⚠ a vague "look and feel" allegation is a standard ground for dismissal. ☐ Assemble secondary meaning evidence: duration and exclusivity, advertising, sales, unsolicited press, surveys, intentional copying.

Color, sound, and non-traditional marks

☐ ⭐ Color can be a mark where it has secondary meaning and is not functional — Qualitex Co. v. Jacobson Products, 514 U.S. 159. ☐ ⚠ Color is never inherently distinctive. Expect to prove secondary meaning. ☐ Check aesthetic functionality — ⚠ if exclusive use would put competitors at a significant non-reputation-related disadvantage, the claim fails. ☐ Sounds, motion, and scent are registrable in principle, ⚠ with demanding distinctiveness showings.

Famous marks and dilution

☐ ⚠ "Famous" means recognized by the general consuming public of the United States. Niche fame does not qualify. ☐ Assemble fame evidence: advertising reach and duration, sales volume, actual recognition surveys, registration. ☐ Plead blurring or tarnishment under 15 U.S.C. § 1125 — ⭐ no confusion or competition required. ☐ ⚠ Note the exclusions — nominative and descriptive fair use, comparative advertising, parody, criticism, news, noncommercial use — and the Jack Daniel's limitation where the use is itself source-identifying. ☐ Note the history: Moseley v. V Secret Catalogue, 537 U.S. 418, required actual dilution under the prior statute; ⭐ Congress amended the law to require only likelihood.

Clearing a blocking registration

☐ Check whether the registrant is actually using the mark on all claimed goods. ☐ ⭐ Consider expungement or reexamination — comparatively fast and inexpensive routes to clear deadwood. ☐ Consider a cancellation petition under 15 U.S.C. § 1064 — ⭐ abandonment, genericness, functionality, and fraud may be raised at any time. ☐ ⚠ Three consecutive years of nonuse is prima facie abandonment under 15 U.S.C. § 1127. ☐ Consider simply asking for a consent agreement. ⭐ It is often cheaper than any proceeding and resolves the refusal in weeks.

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Authority quick reference

Authority	Use it for
15 U.S.C. § 1051	Application; ⭐ intent to use
15 U.S.C. § 1052	Grounds for refusal; acquired distinctiveness
15 U.S.C. § 1053	Service marks
15 U.S.C. § 1055	⚠ Related company use and quality control
15 U.S.C. § 1057	⭐ Nationwide constructive use from filing
15 U.S.C. § 1058	⚠ Year five to six declaration of use
15 U.S.C. § 1059	Ten-year renewals
15 U.S.C. § 1060	⚠ Assignment with goodwill
15 U.S.C. § 1064	Cancellation grounds and timing
15 U.S.C. § 1065	⭐ Incontestability
15 U.S.C. § 1072	Constructive notice
15 U.S.C. § 1114	Infringement of a registered mark
15 U.S.C. § 1115	Evidentiary presumptions; defenses
15 U.S.C. § 1116	Injunctions; counterfeit seizure
15 U.S.C. § 1117	Profits, damages, trebling, fees
15 U.S.C. § 1119	Court-ordered cancellation
15 U.S.C. § 1121	Federal jurisdiction
15 U.S.C. § 1125	False designation, trade dress, dilution, cybersquatting
15 U.S.C. § 1127	Definitions; ⚠ abandonment
Two Pesos, 505 U.S. 763	Inherently distinctive décor
Qualitex, 514 U.S. 159	Color as a mark
Wal-Mart v. Samara, 529 U.S. 205	⚠ Product design needs secondary meaning
TrafFix, 532 U.S. 23	Functionality bar
KP Permanent, 543 U.S. 111	Descriptive fair use
Moseley, 537 U.S. 418	Dilution history
B&B Hardware, 575 U.S. 138	⚠ Board preclusion
Matal v. Tam, 582 U.S. 218 · Iancu v. Brunetti, 588 U.S. 388	Struck content-based bars
Booking.com, 591 U.S. 549	Generic.com marks
Jack Daniel's, 599 U.S. 140	Source-identifying parody
Abitron, 600 U.S. 412	⚠ Domestic use requirement

⭐ Two rows do most of the work in practice: 15 U.S.C. § 1058, because missing it cancels everything, and 15 U.S.C. § 1065, because filing it makes every future letter stronger.

For the artwork underlying a logo — which is a copyright question with a different owner in many cases — see The Copyright Registration and Enforcement Toolkit.

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What to bring to the first meeting with counsel

☐ Every name under consideration, ranked ☐ What you sell now, and what you plan to sell in three years ☐ Where you sell — states, countries, platforms ☐ The entity name and structure, and who will own the mark ☐ Any use already made — first date, first sale, evidence ☐ Any existing registrations or applications, including foreign ☐ Any designer or agency agreements for logos and brand assets — ⚠ and whether they contain a copyright assignment, which is a separate question from the trademark ☐ Any conflicting names you already know about ☐ Any prior demand letters in either direction ☐ Domains, handles, and app store listings, and whose name they are in

⭐ The last item catches more problems than it should. A brand held by the company but a domain held by a former contractor is a functional loss of control that no registration fixes. See Trade Secrets and Restrictive Covenants: A Comprehensive Guide to Protection, Enforcement, and Defense on the parallel problem of departing employees holding company information and access.

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Related Documents

• Trademarks: A Comprehensive Guide to Selection, Registration, Enforcement, and Disputes
• The Name on the Door: How Trademark Rights Are Actually Acquired and Lost
• The Trademark Clearance and Enforcement Toolkit
• You Made It, So You Own It: What Copyright Actually Protects and What It Does Not
• Registering, Licensing, and Enforcing a Copyright: A Practical Checklist
• Copyright: A Comprehensive Guide to Ownership, Registration, Licensing, Fair Use, and Infringement
• The Copyright Registration and Enforcement Toolkit
• Protecting Trade Secrets and Handling a Departing Employee: A Practical Checklist
• Trade Secrets and Restrictive Covenants: A Comprehensive Guide to Protection, Enforcement, and Defense
• The Trade Secret and Restrictive Covenant Toolkit
• Forming and Governing a Nonprofit Organization: A Practical Checklist
• What Walks Out the Door: Trade Secrets, Non-Competes, and the Employee Who Leaves