Trademark Application Prosecution

Trademark application prosecution begins after a trademark has been filed.  Prosecution is the search and examination of a trademark application.  All applications must be reviewed before approval.

Trademark Application Prosecution Steps

After a trademark application is filed, the United States Patent and Trademark Office assigns the application to a trademark examiner.  A trademark examiner is an official who reviews the application and decides whether it meets the formal and substantive requirements to be approved as a registered trademark.  This process usually takes a year or more and involves several steps.

Step 1: Search

The trademark examiner first conducts a search of the Trademark Office records, looking for any trademark which might present a likelihood of confusion.  The examiner may find marks that are identical or similar to the applied-for mark.  Either can become the basis for a rejection.  Similarity depends on a number of factors.  Generally, the most important factors when comparing two trademarks are the similarity of the marks themselves (in sight, sound, and impression) and the similarity of the products or services with which the trademarks are used.

Step 2: Examination

After conducting the search, the examiner may send an office action.  An office action is generally thought of as a rejection, but is really just a formal communication from the Trademark Office.  The office action may raise technical issues, such as a requiring a disclaimer, an amendment to how the goods or services are identified, more information about the nature of the goods or the identity of the applicant, or other issues.  Sometimes, the office action cites another mark and claims there is a likelihood of confusion.

The applicant must respond to the office action by a deadline.  This is a critical part of the trademark application prosecution timeline.  The applicant must respond to all issues raised in the office action.  If the applicant fails to respond in time, the trademark application will abandon.

Examination is the Trademark Office’s process for ensuring that all registered trademarks meet fundamental criteria.  It is also the applicant’s opportunity to learn about any issues with the application and correct those.  Sometimes, the issues may not be correctable.  Other times, they may be very difficult to correct.  A trademark examiner may raise many issues and present multiple likelihood-of-confusion rejections.  Occasionally, the examiner will not send an office action at all, because the application is allowable in its original state.

Step 3: Publication

If the application is immediately allowable, or if the applicant successfully responds to all issues raised in the office action, the Trademark Office publishes the application.  Publication is a 30-day window in the trademark application prosecution timeline when the Trademark Office publishes all of the application’s details.  This occurs in the Office’s own electronic newspaper.  Publication is also the time during which an application is vulnerable to opposition.  Generally, most applications go through the publication window without incident.

Step 4 (optional): Statement of Use

After publication, the Trademark Office either registers the trademark application or allows it.  Applications for marks that were in use when the application was filed move on to registration.

The Trademark Office allows applications for trademarks that were not in use when the application was filed.  The Office allows an application by issuing a notice of allowance.  The notice of allowance gives the application 6 months to send in proof that it has begun to use the trademark in connection with the sale or offering of its products or services.  If the applicant submits this use, then the trademark examiner will review it.  If the examiner decides the use is sufficient, the Trademark Office will register the trademark.

Step 5: Registration

Once the trademark registers, the trademark owner can begin using the registration symbol ® on the trademark. This indicates to the world that the trademark has been formally approved by the Trademark Office.  Before the trademark registers, the owner can only use the TM symbol with the trademark.  After the trademark registers, it enters a post-registration phase.  The trademark owner must maintain the trademark registration then by submitting periodic paperwork and fees.

Trademark Application Prosecution Help

Trademark application prosecution can be daunting, slow, and filled with unknown hazards.  If you have questions, please feel free to contact trademark attorney Tom Galvani at the phone number at the top of this page.  Consultations are free and confidential.