What exactly does the USPTO look at when examining a U.S. trademark? Registration process, choice of use basis, and responding to refusals, don't miss response deadlines, and whether the evidence of use can withstand scrutiny.

When the USPTO examines a US trademark, it focuses on two core issues: whether the mark can identify the source of your goods in commerce, and whether the evidence of use you submit is genuine. The registration process typically takes 8-12 months from filing to registration. The filing basis you choose determines when you must submit evidence. The deadline to respond to an office action is 3 months, extendable for a fee. Once evidence of use is selected for audit and found to be fraudulent, the registration will be revoked.

What to check before applying: not whether there is an identical one, but whether there are similar ones.

Many clients feel wronged the first time they receive a refusal—after all, the trademarks aren't completely identical. The USPTO's examination standard doesn't look for an "exact match"; it looks at the likelihood of confusion under Section 2 of the Lanham Act (15 U.S.C. §1052). The examiner compares your mark with prior registered trademarks across four dimensions—sound, appearance, meaning, and commercial impression—and then assesses that against the degree of relatedness between the goods or services. This means that if you apply for "ZUNI" for selling water cups and someone else has registered "ZOONI" for tableware, the odds of being cited as a bar to registration are not low.

In practice, we generally recommend that clients conduct a comprehensive prior trademark search before filing, covering the USPTO's TESS database, common law use (such as Amazon store names and standalone website domain names), and state registration records. Searching only the federal registration database is often insufficient, as common law rights in the United States can equally serve as a basis for opposition. The time and cost spent on the search step are usually far more worthwhile compared to the cost of responding to a refusal later on.

Choose the basis for use: 1(a) or 1(b) determines when you submit evidence.

U.S. trademark registration differs from most countries in that it requires applicants to specify a "filing basis." There are two common types: 1(a) based on actual use, and 1(b) based on intent to use. If you choose 1(a), you must submit evidence of use and the date of first use at the time of filing; if you choose 1(b), you first secure a filing date, and after the USPTO issues a Notice of Allowance, you then submit a Statement of Use within 6 months. This deadline can be extended five times, each for 6 months, for a cumulative maximum of 36 months, but a fee must be paid for each extension.

A common mistake among cross-border e-commerce sellers is casually checking box 1(a) and then using a Photoshopped image or a product image that hasn't even been listed yet to make up the evidence. The USPTO is scrutinizing proof of use more and more closely, especially with the random audit mechanism introduced after 2020. Applications selected for audit must submit additional supplementary materials as proof of use. If they can't withstand verification, the examiner will demand an explanation, and if the explanation doesn't hold up, the application will be rejected outright.

Types of evidence examiners actually review: web page screenshots are not a cure-all.

For goods trademarks, the forms of use evidence accepted by the USPTO include product labels, packaging, hang tags, and shelf photos bearing the trademark, as well as webpage screenshots that show the trademark, the goods, and the sales scenario. For service marks, advertising materials, brochures, website pages, and store photos are considered. The key is that the evidence must simultaneously reflect three things: the trademark, the goods or services, and the commercial context. A screenshot of just a logo, or a page with no point of purchase, is usually not enough.

We've seen quite a few Amazon sellers use screenshots of product detail pages directly. This is acceptable in most cases, but the page must show the brand name, the product, and an add-to-cart or purchase option. If the page is purely display-oriented with no sales functionality, the examiner may consider it not to constitute "use in commerce." Additionally, the date on the evidence must correspond to the first use date you declared. A timeline mismatch is a very common reason for an office action.

Rejections come in two types: procedural and substantive, and they require completely different responses.

Office Actions fall into two categories. Procedural refusals, such as overly broad goods descriptions, unclear classification, or incomplete applicant information, are relatively easy to handle—just amend or supplement as required. Substantive refusals are more troublesome. The common ones are likelihood of confusion refusals under 15 U.S.C. §1052(d), and descriptiveness or genericness refusals under §1052(e). The former requires arguing that the marks are not similar or the goods are not related, while the latter often requires submitting evidence to prove that the trademark has acquired "secondary meaning"—that is, consumers have already come to associate it with your brand.

The response deadline is three months from the date the examination opinion is issued. This deadline can be extended, by three months each time, up to a maximum of six months, but the extension fees are not cheap, and an extension by itself will not make the examiner change their view. If you miss the deadline without extending, the application will be deemed abandoned, and you can only refile, which means the filing date is lost. Many clients encountering this for the first time assume they can take their time, and by the time they remember, the deadline has already passed. If you are also pursuing filings in the EU or other countries, the timelines need to be coordinated together—don't focus on one and neglect the other.

Public Notice Period and Third-Party Objections: 30 Days Is Not the End

After the review is approved, the USPTO will publish the trademark in the Official Gazette, entering a 30-day opposition period. Any third party who believes their rights have been harmed can file an opposition within these 30 days, and opposition proceedings are heard by the Trademark Trial and Appeal Board (TTAB). The opposition period can also be extended, up to around 180 days. This stage is where Chinese companies expanding overseas often stumble—they fail to notice something during their own registration, and only when someone files an opposition do they discover the other party's prior rights.

If an opposition notice is received, the response deadline is usually around 40 days (counted from the date the opposition notice is served), which is much tighter than the 3 months for an office action. In practice, we generally advise clients to actively monitor during the publication period, especially for core categories and core markets, rather than waiting for the other party to come to them. For cross-border e-commerce sellers who sell on multiple sites at the same time, the trademark status of the U.S. site is worth monitoring separately.

Registration is not a one-time thing: remember to pay Section 8 and Section 15.

After registering a U.S. trademark, you must file a Section 8 declaration of use between the 5th and 6th years to prove the trademark is still in commercial use; between the 9th and 10th years, you must file a renewal (Section 9). If the trademark is not used for 3 consecutive years, others may petition to cancel it on the grounds of "abandonment." In addition, after 5 years of registration, you can file a Section 15 declaration to make the trademark "incontestable" under certain conditions, making it harder for others to challenge it based on prior use or other grounds.

Many Chinese applicants overlook these follow-up maintenance actions. We have handled quite a few inquiries where clients assumed everything was done once they received the registration certificate, only to find that the registration was revoked because Section 8 was not filed, and they had to go through the entire application process again. Setting up a maintenance calendar is far less troublesome than fixing things after the fact.

The response deadline and evidence verification are the two lines most prone to problems.

To sum up the previous sections: when the USPTO examines a U.S. trademark, it is essentially assessing "distinctiveness" and "authenticity." Distinctiveness corresponds to the likelihood-of-confusion analysis and inherent distinctiveness, while authenticity corresponds to evidence of use. Procedurally, an office action response period is 3 months, extendable to 6 months; an opposition response period is about 40 days; after the notice of allowance, a statement of use must be submitted within 6 months, extendable to 36 months; and the opposition period starts at 30 days. It's fine if you can't remember these numbers, but you should know they exist and that they all incur fees.

When it comes to the evidence trail, the further along you go, the stricter it gets. Random audits by the USPTO, cancellation petitions filed by third parties, and TTAB opposition proceedings can all dig up your evidence and scrutinize it again. Rather than explaining after the fact, it's better to build a solid evidence chain at the time of filing. If you're planning trademark protection in the US, EU, or other countries, you can start by reviewing our compiledUS and EU trademark and patent filing page.Regarding intellectual property legal services in other countries, it helps to have a general sense of the overall pace. Overseas trademark registration and maintenance are essentially a cross-jurisdictional exercise in time management. Our team handles overseas intellectual property matters quite frequently, so if you have specific questions, feel free to reach out directly.

The foreign-related intellectual property team at Guangdong Zhiming Law Firm has long handled trademark, patent, and copyright applications and disputes in the United States, the European Union, and major economies, covering the registration, opposition, cancellation, and rights protection needs of cross-border e-commerce sellers. Consultation hotline: 4008-363-555.

Disclaimer: This article is based on U.S. federal trademark laws and regulations and publicly available USPTO examination practices as of 2026. It is provided for general reference only and does not constitute legal advice for any specific case. Trademark case outcomes are influenced by multiple factors, including the mark, the goods, the evidence, and the examiner's discretion. Please evaluate specific actions separately based on the circumstances of each individual case.