Trademark Prosecution Process
The process of applying for a trademark with the United States Patent and Trademark Office (USPTO) is called "Trademark Prosecution." As a law firm with a practice emphasis on trademark and I.P. asset protection, we frequently assist our clients through the trademark prosecution process.
The entire process can be a lengthy ordeal, and it's difficult for companies to go it alone without the assistance of experienced trademark attorneys. Our dedicated team of partner-level lawyers has a wide breadth of trademark prosecution covering a variety of business types. Below is a brief overview of how A.H. General Counsel Services can help your business through the trademark prosecution steps.
SECURING CLEARANCE
One of the first steps in trademark prosecution is securing clearance. Clearance allows you to ascertain whether the mark you wish to adopt is available. There are two types of searches your attorney can perform in determining trademark availability:
- Preliminary Search: A preliminary search helps uncover any clear barriers to the use or registration of your proposed trademark. If a mark is clearly unavailable because there is a prior existing registration for the same or highly similar mark, you need not waste resources pursuing it. Preliminary searches generally do not cover common law uses, such as on the Internet or trade and business names.
- Comprehensive Search: A comprehensive search covers a broader range of sources and includes the common law uses that can present obstacles to registering and using a mark in the U.S.
Your trademark attorney will help by conducting preliminary searches that provide you with an overview of registered and pending trademarks. Your attorney can also perform a comprehensive search, which digs deeper into trademark availability. A comprehensive search provides you with a deeper analysis of whether your trademark is available, including consideration of common law and unregistered marks which might deter your use or registration of a mark.
AVOID PERFORMING A DIY TRADEMARK SEARCH
There are costs associated with both preliminary and comprehensive searches, but the investment is worth it because it prevents last-minute re-branding if you discover that your trademark is not available. You may hear from others that you can clear your trademark yourself, in order to save money, just by going to the U.S. Patent and Trademark Office's website and searching their database. This is seldom recommended as clearance through the USPTO uses various factors to determine whether a new trademark will cause a likelihood of confusion with an existing one. Because the USPTO looks at more issues than whether two trademarks are identical or very similar, the nuance is best navigated by a seasoned trademark attorney.
THE APPLICATION
If you're already using your trademark in commerce, you should work with your trademark attorney to file a use-based application. You will need to provide a specimen of the current use like product packaging showing the trademark being used for the products. For services, this is usually captured by screenshots from your website or other advertisements.
If you aren't yet using your trademark in commerce, you should work with your trademark attorney to file an intent-to-use (ITU) application. The application is the same, but no specimen is needed as you have not introduced your product or service to the market yet.
THE EXAMINATION
Once your application(s) is submitted, it will usually take 3-6 months before it will be examined. The examining attorney will search the USPTO's database of registered and pending marks to see if there are any previously filed marks that conflict with your mark. Similar trademarks for products and services similar to your own are easy to confuse and can block the registration of your mark.
Other reasons the USPTO might refuse registration include:
- A vague or indefinite description of products and services.
- Discrepancies between a mark as applied for and the specimen used to show use.
- The descriptiveness of the mark.
Other issues can also come up during examination. The examining attorney will issue an Office Action which details any objections to registration or additional information that is needed so your application can proceed. You are then allowed to present arguments to the examining attorney to overcome these objections. Your trademark attorney should work with you on arguments or amending your application to overcome these objections.
PUBLICATION
Once your application is approved, it is then published for opposition. This gives other parties are a 30-day period in which to review your application and formally oppose registration. If someone files a Notice of Opposition, your application will be moved into an adversary proceeding and you won't be able to complete the registration until the matter is resolved. If no one opposes your application, your mark will be registered.