Prosecution

Trademark Filing & Prosecution: A Step-by-Step Guide

From choosing TEAS Plus through Madrid Protocol extensions, this guide walks through every stage of US trademark prosecution — and what a sane docketing workflow looks like at each step.

8 min readUpdated January 5, 2026LexiDots Editorial
01

Filing strategy: TEAS & classes

Start with the right basis. A Section 1(a) application requires use in commerce; Section 1(b) covers intent to use. Choose Nice classes carefully — they determine fees, exam scope, and post-registration obligations. TEAS Plus, using pre-approved descriptions from the ID Manual, generally produces lower fees and fewer formal refusals.

02

The examination phase

Three to six months after filing, an Examining Attorney reviews the application. Prosecution is the back and forth that follows — arguing likelihood of confusion, amending identifications, traversing descriptiveness refusals. Treat each office action as a project: docketed deadline, named owner, escalation path.

03

Publication for opposition

Once approved, the mark is published in the Official Gazette and a 30-day opposition window opens. Most marks pass through unopposed and proceed either to registration (Section 1(a)) or to a Notice of Allowance (Section 1(b)). Either way, the docket needs to know the difference because the next steps diverge.

04

Registration & maintenance

Registration is not the finish line. Section 8 declarations are due in the 5th–6th year. Renewals are due every 10 years thereafter. Missing a maintenance deadline cancels the registration — and the only sane way to track that across a portfolio is a rules engine, not a calendar.

05

Going global: Madrid Protocol

The Madrid Protocol streamlines filing across 120+ countries from a single base application. Note: centralized filing is not centralized prosecution. Each designated country examines under its own laws and can issue local refusals on its own timeline. A modern docket links the Madrid base, each designation, and each refusal as one connected family.

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