Legal Project Management Plan & Checklist
Purpose of this Guide: Open this plan when your client wants to obtain a federal trademark registration in the United States for a word mark, logo, stylised mark, sound, or colour. Use this plan from the initial client consultation and clearance search through to issuance of the official registration certificate by the USPTO, and for ongoing post-registration maintenance.
Jurisdiction: United States - federal. All applications are filed with the United States Patent and Trademark Office (USPTO) through the Trademark Electronic Application System (TEAS). There are no forks in this plan.
The Process at a Glance: The process begins with an initial client consultation to identify the mark, goods and services, filing basis (use-based or intent-to-use), and any priority date needs. A knock-out search is conducted first for cost efficiency, followed by a comprehensive full clearance search using USPTO TESS and common law sources. A written clearance opinion is prepared for the client. The application is then drafted, including goods and services descriptions aligned with the USPTO Acceptable Identification Manual and, for use-in-commerce filings, specimens showing the mark in actual commercial use. If the applicant is domiciled outside the US, a US-licensed attorney must be engaged as attorney of record before filing. The TEAS application is filed and a serial number assigned. The USPTO examining attorney reviews the application and may issue an Office Action raising substantive objections such as likelihood of confusion or descriptiveness. A response is submitted within 3 months (extendable to 6 months) of the Office Action date. Once approved by the examiner, the mark is published in the Trademark Official Gazette for a 30-day opposition window. If no opposition is filed, the registration certificate is issued for use-based applications. For intent-to-use applications, a Statement of Use (or Allegation of Use) must be filed within 6 months of the Notice of Allowance (extendable up to 36 months total). Ongoing maintenance requires filing Section 8 and 15 declarations at the five-year mark and renewal under Section 9 every ten years.
| Field | Token | Type | Required | Defined in |
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| Matter(4) | ||||
Key Legislation and Case Law: Lanham Act (15 U.S.C. ss 1051 et seq.) - s 1(a) (use in commerce filing basis), s 1(b) (intent to use filing basis), s 2(d) (likelihood of confusion ground for refusal), s 2(e) (merely descriptive marks), s 7 (certificates of registration), s 8 (declaration of continued use at five-year mark), s 9 (ten-year renewal), s 15 (incontestability declaration). USPTO Rules of Practice - 37 CFR Part 2. USPTO TEAS filing fees: $250 per class (TEAS Plus) or $350 per class (TEAS Standard). Office Action response deadline: 3 months from the date of issuance, extendable by 3 months for an additional fee (total maximum 6 months - strictly enforced). In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007) - descriptiveness analysis. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) - the 13-factor DuPont test applied by the USPTO to assess likelihood of confusion under s 2(d). Post-registration maintenance: Section 8 declaration of continued use filed between years 5 and 6, Section 15 incontestability declaration optional after 5 years of continuous use, ten-year renewal due by the registration anniversary date.
* Disclaimer: We're nobody's lawyer, because we aren't lawyers. You are, so you know better than to take legal advice from an app. We also aren't accountants or dog trainers - just digital spirit guides taking zero liability for any of this. This site exists to gather the collective knowledge of practitioners like you. Verify everything and submit your feedback on the US Trademark Prosecution & Registration matter plan to improve the playbook. THIS IS NOT LEGAL ADVICE, it's a request for input.
This legal matter plan provides a structured workflow for Intellectual Property cases, outlining the standard PROC_REGULATORY process. Utilize these tracking templates to manage your legal cases efficiently.
| Matter numberⓘ |
matter.matterNumber |
| text |
| Required |
inheritedmatter-core |
| Matter title | matter.title | text | - | inheritedmatter-core |
| Matter typeⓘ | matter.matterType | text | - | inheritedmatter-core |
| Matter status | matter.status | text | - | inheritedmatter-core |
| Client(1) | ||||
| Client name | matter.clientName | text | Required | inheritedmatter-core |
Confirm mark details, filing basis, goods and services, and any US co-counsel requirements.
Conduct comprehensive trademark clearance search and issue written opinion advising on registration risks.
Draft goods/services descriptions, collate specimens of use, and prepare TEAS application for signing.
Submit TEAS application to USPTO and docket serial numbers and all downstream deadlines.
Respond to examiner objections and resolve all administrative and substantive issues.
Monitor publication window, file Statement of Use if ITU basis, and retrieve official registration certificate.
File Section 8/15 declarations at five-year mark and Section 9 renewal at ten-year anniversary.
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