Trademark Prosecution

Home Trademark Prosecution

Trademark prosecution is an industry term used to describe the process that involves filing a trademark or service mark application with the United States Patent and Trademark Office (“USPTO”) and arguing against any Office Action received from the USPTO.  The trademark prosecution process begins when an application for a trademark or service mark registration is filed with the USPTO.

There are two main types of trademark applications, 1) a use based application, and 2) an intent- to-use application. In order to file a use based application a trademark or service mark must be being used “in commerce” at the time of filing the application. The term used “in commerce” has a legal definition that is derived from the Trademark Act and its related case law.  It is very important to determine what type of application should be filed because filing the wrong type of application may cause serious issues for the trademark owner in the future. That is because a registered trademark or service mark may be canceled in litigation if an incorrect application was filed. The attorneys at The Plus IP Firm always interview every client before filing a trademark application to determine if a client’s trademark or service mark is being used in commerce.

If a use based application is filed an applicant must submit evidence or a specimen illustrating that the trademark or service mark is actually being used “in commerce”.  An applicant must be very careful when submitting the evidence because failure to submit the correct evidence will result in an Office Action rejecting the specimen. For example, submitting a business card or other advertising materials are not acceptable specimens for goods and will result in a rejection.

If a trademark or service mark is not being used “in commerce” then an applicant may file an intent-to-use application. The intent to use application allows a user to secure rights to a trademark or service mark for a certain period of time before actually using the trademark or service mark. In many cases, clients will file an intent-to-use application before actually using the mark in commerce to ensure that they have rights to the trademark or service mark before investing funds in marketing and advertising materials and designs.

If an applicant receives an Office Action, the applicant must respond to the office action within six months or the trademark or service mark application will go abandoned. One type of Office Action that many “do it yourself” applicants receive is a “Likelihood of Confusion” refusal.  The “Likelihood of Confusion” is also known as a 2d refusal because it is based upon section 2(d) of the Trademark Act. 15 U.S.C. §1052(d). A trademark search is required to determine if a trademark or service mark creates a “likelihood of confusion” with another mark.  An examining attorney at the USPTO will not allow a trademark or service mark to be registered if the applicant’s mark creates a “likelihood of confusion” with another mark filed or registered with the USPTO prior to the filing date of an application for registration.

The attorneys at The Plus IP Firm recommend having a trademark search conducted by a professional before filing a trademark or service mark application with the USPTO.  A trademark search determines the probability of whether a trademark or service mark can be registered with the USPTO.  Many trademark searches conducted by “do it yourself” applicants are done incorrectly and as a result the “do it yourself” applicant will not be aware of all the trademarks or service marks that will affect the applicant’s ability to register the trademark. The attorneys at The Plus IP Firm are frequently retained to respond to “likelihood of confusion” office actions that are received by “do-it-yourself” trademark searchers.

If you have received an Office Action and need assistance in responding the Office Action, the attorneys at The Plus IP Firm are available to help you.

If you have not filed an application for registration, then the attorneys at The Plus IP Firm are available to discuss the type of application that should be filed and to advise you on other issues that may prevent you from registering your trademark or service mark.

If you have not conducted a search, the attorneys at The Plus IP Firm are available to assist you with conducting a professional trademark search of all USPTO registered marks and trademark applications to determine the probability of receiving a “likelihood of confusion” refusal and your probability of registering your trademark or service mark.