Trademark Prosecution: Everything You Need To Know
Trademark prosecution is the technical term used to describe the process of applying for a trademark with the United States Patent and Trademark Office (USPTO).3 min read
2. Office Action
Trademark prosecution is the technical term used to describe the process of applying for a trademark (or service mark) with the United States Patent and Trademark Office (USPTO).
A trademark is a symbolic representation of a company. The symbol can be a picture, text, or even a smell. Whatever, it must be unique to that company otherwise people will confuse it with other company's trademarks.
Trademark registration is a lengthy process due to the amount of review required. It can take as long as 12-18 months to register a trademark. And that's assuming there are no challenges to the application.
When filing a trademark application, the first thing to consider is the type of trademark: use-based or intent-to-use. Simply filing the wrong type of application can trigger a rejection by the USPTO.
“Use-based” means you are currently using the trademark “in commerce” (i.e., you're currently using it in connection with your business). You will need to provide the USPTO with valid evidence of current commercial use. Advertising materials such as business cards, for example, are not considered valid evidence. Submitting invalid evidence is another reason for the USPTO to reject your application.
“Intent-to-use” means you are not yet using the trademark “in commerce,” but you are registering it in anticipation that you will use it when you launch your business. This frees you to invest in advertising and marketing knowing your trademark is unique and unlikely to be challenged by other businesses. The USPTO will require you to prove your intention to use the mark within the next three years. This is to make sure you aren't just trying to stop others from using that trademark.
If you file an "intent-to-use" application, your trademark will not be fully registered until you provide a Statement of Use to prove that you are actively using it.
Here are some of the things a USPTO examiner will check for in your application:
- There is no “Likelihood of Confusion” with existing trademarks.
- That your trademark is a valid and distinctive mark.
- That your trademark is not “scandalous” (i.e., it would be considered inappropriate by the standards of the day)
- That your trademark is descriptive.
- That it's not primarily a surname.
- That it's functional.
If your trademark is similar to an existing trademark, the USPTO will issue a “Likelihood of Confusion” refusal. This is one reason why it's best to hire a trademark lawyer to help with your application. Most people don't know how to conduct proper trademark searches. As a result, they aren't aware of all the different kinds of trademarks and service marks that could trigger a refusal. According to the Wall Street Journal, trademark applications filed by attorneys are 50 percent more likely to be approved by the USPTO.
If the USPTO raises a concern with any of the above criteria, you will receive an “Office Action.” This is not uncommon, but it is less likely if you hire a trademark lawyer to help with your application since trademark lawyers understand fully the USPTO's standards and requirements.
If you get an Office Action, you can respond with a challenge, a revision to your trademark, or both. Again, an experienced trademark attorney can help with this process or appeal on your behalf to the Trademark Trial and Appeal Board.
Third parties may also oppose your trademark application if they believe it impacts them negatively. This might be because of a “Likelihood of Confusion” or because your trademark insults them in some way. Some companies have unregistered or state trademarks, which will not always turn up in USPTO trademark searches. There's a 30-day window for such challenges, beginning when your application appears in the Official Gazette.
Once the USPTO is satisfied your trademark is valid and is in use “in commerce,” it will issue a registration. However, that registration can be canceled by the USPTO if:
- It is shown to be deceptive or misleading.
- It is disparaging.
- It has not been used “in commerce” for three years.
- It is descriptive or generic.
Your trademark registration is good for 10 years. If you need to renew it, you must do so shortly before that anniversary. Failure to renew will result in your registration's cancellation.
If you need help with trademark prosecution, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.