Key Takeaways

  • Trademark prosecution refers to the legal process of applying for and securing a federal trademark with the USPTO.
  • The process involves multiple stages, including application, examination, response to Office Actions, and final registration.
  • Applicants must choose between a “use-based” or “intent-to-use” application and meet specific evidence requirements.
  • Common refusals include likelihood of confusion, genericness, and descriptiveness.
  • Third-party opposition may delay or prevent registration.
  • Post-registration responsibilities include proper use, enforcement, and renewal.
  • Legal counsel can significantly improve the success rate of trademark applications.

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.

Application Process

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.

Trademark Search and Clearance

Before filing an application, it’s vital to conduct a thorough trademark search to identify potential conflicts. This involves reviewing the USPTO database for existing marks and examining state registrations, common law uses, and domain names. A professional clearance search can reduce the risk of receiving a “Likelihood of Confusion” refusal and mitigate the chance of third-party oppositions during the publication phase.

Office Action

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.

Trademark Prosecution Best Practices

To enhance the success of your trademark application and reduce the likelihood of refusals or delays:

  • Perform a comprehensive clearance search before filing.
  • Select a distinctive and non-descriptive mark.
  • Ensure specimens are accurate and properly formatted.
  • Use a professional trademark attorney for drafting and filing.
  • Monitor deadlines for responses and renewals.

These steps streamline the trademark prosecution process and protect the long-term value of your intellectual property.

International Trademark Prosecution

For businesses operating globally, international trademark protection is essential. The Madrid Protocol allows U.S. applicants to file a single application to seek trademark protection in multiple member countries. However, each country’s trademark office will still examine the application under its own laws. Understanding regional nuances in prosecution—such as stricter distinctiveness standards in the EU or use requirements in Canada—can help avoid international delays or refusals.

Maintaining and Enforcing Trademark Rights

Trademark prosecution does not end with registration. Owners must actively maintain their trademarks by:

  • Filing a Declaration of Use between the 5th and 6th year after registration.
  • Renewing the registration every 10 years.
  • Monitoring the market for infringement.
  • Enforcing rights through cease and desist letters, litigation, or TTAB proceedings.

Failure to properly maintain and enforce a trademark can lead to cancellation or loss of rights.

Trademark Opposition Proceedings

Once a trademark is published in the USPTO’s Official Gazette, third parties have 30 days to oppose the registration. Oppositions are formal proceedings before the TTAB, where the opposer must show they would be harmed by the mark’s registration. Grounds for opposition include priority of use, likelihood of confusion, and dilution. If no opposition is filed, or if the opposition is unsuccessful, the mark proceeds to registration. Legal counsel is often essential during opposition proceedings due to the complex procedural rules involved.

Responding to Office Actions

Office Actions can be either non-final or final and may include substantive refusals (e.g., likelihood of confusion, merely descriptive marks) or procedural issues (e.g., improper specimen, missing disclaimers). Applicants typically have six months to respond. Responses must directly address the examining attorney’s concerns and provide arguments or amended materials as needed. In some cases, a Request for Reconsideration or an appeal to the Trademark Trial and Appeal Board (TTAB) may be necessary.

Frequently Asked Questions

  1. What is the difference between trademark prosecution and litigation?
    Trademark prosecution involves applying for and registering a trademark, while litigation refers to resolving trademark disputes, often in court or before the TTAB.
  2. How long does trademark prosecution take?
    The process typically takes 12–18 months but can take longer if there are Office Actions, oppositions, or appeals.
  3. Can I file a trademark application without a lawyer?
    Yes, but working with an attorney increases your chances of success by ensuring the application meets all legal requirements and avoids common pitfalls.
  4. What happens if my trademark is opposed?
    You will need to respond before the TTAB. If you fail to respond or lose the opposition, your mark may not be registered.
  5. Do I need to use my trademark before registering it?
    Not necessarily. You can file under “intent-to-use,” but must eventually provide proof of commercial use before the USPTO issues final registration.

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.