The trademark prosecution definition refers to the legal process of examining a trademark application and registering the applied trademark for a product or service if it's found to be eligible.

A trademark identifies and distinguishes your goods or products from those of others by means of a unique name, logo, design, color, sound, or device.

The Advantages of Trademark Registration

Filing for federal registration with the United States Patent and Trademark Office (USPTO) offers the following benefits:

  • You can recover the costs, damages, and profits for infringement.
  • You can use the registered mark symbol.
  • The visibility of your trademark increases, which helps in preventing the adoption of similar marks by others.
  • You can sue for infringement in a federal court.
  • It becomes easier to prove infringement of your trademark since registration serves as a prima facie evidence of ownership.
  • The registration serves as evidence that your mark is not confusingly similar to other marks in use.

Trademark Prosecution and Management

The trademark prosecution process seeks to determine whether the applied trademark is unique to the claimant and is different from other existing trademarks.

A trademark examiner basically looks at the following three things during prosecution:

  • Strength: The strength of a trademark lies in its distinctiveness; a higher degree of distinctiveness reduces the chances of infringement.
  • Type: The type of a trademark refers mainly to its text and its similarity to other registered words and slogans; physical characteristics of the mark are rarely considered.
  • Clearance: Clearance is yet another step aimed at ensuring the uniqueness of a trademark; it examines whether the applied trademark is sufficiently different from existing trademarks to be eligible for a standalone registration.

The trademark prosecution involves comparing the applied trademark with the huge pool of existing trademarks from different times and industries; this makes the process quite labor intensive. A number of documents need to be filed relating to the strength, type, and clearance of the trademark.

Laws and requirements relating to trademark prosecution differ from country to country. Usually, prosecution includes the filing of a trademark application and its review by a government examiner.

Right to Register vs. Right to Use a Trademark

The right to register a trademark and the right to use it are two different issues. For example, you may be able to use a trademark but still may not be able to register it federally.

In order to qualify for federal registration, your trademark should not be likely to deceive or cause confusion among consumers with any other trademark registered earlier. Moreover, your trademark must not be generic, descriptive, misrepresentative, scandalous, or immoral.

In order to qualify for use of a trademark, the mark should not be likely to cause confusion among consumers with a previously used trademark in the region where you intend to use it. Note that a federally registered trademark is deemed to have been used throughout the U.S. from the date of filing the application.

While determining the likelihood of confusion, the examining attorney takes the following DuPont factors into account:

  • The distinctiveness of the mark in its entirety, considering its appearance, connotation, sound, and impression.
  • The distinctiveness of goods or services related to the applied trademark from those related to an existing trademark.
  • The distinctiveness of associated trade channels.
  • Target market and sales conditions.
  • Reputation of the earlier trademark.
  • Type and number of similar marks related to similar goods.
  • Extent and nature of confusion.
  • Duration and conditions of concurrent use of marks without causing confusion.
  • Type of goods that use or do not use a house, family, or product mark.
  • Market relationship between the applicant and an existing mark owner (consent, agreement, assignment, laches, estoppels, etc. for use of a mark or to preclude confusion.)
  • The extent of the applicant's right to prevent others from using the applied trademark.
  • The extent of likely confusion.
  • Any other fact that establishes the effect of use.

Every circuit uses its own version of DuPont factors to assess the likelihood of confusion. The Second Circuit uses the following Polaroid factors:

  • Strength of the mark.
  • Extent of similarity with other marks.
  • Similarity of the products related to the marks in question.
  • Likelihood of bridging the gap by the prior owner.
  • Likelihood of actual confusion.
  • Defendant's sincerity in adopting its mark.
  • Quality of the defendant's product.
  • Sophistication of the intended buyers.

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