A trademark is a sign that distinguishes the goods or services of one enterprise from those of other enterprises. The owner of a trademark may use it to prevent others from using a similar or identical sign in connection with similar goods or services and to benefit from the goodwill that the owner has generated in the sign.
The process of trademark prosecution is obtaining a trademark registration from a national or regional trademark office. The process involves:
- Filing a trademark application
- Searching for prior trademarks
- Examining the application for compliance with formalities
- Publishing the application in a trademark gazette
If no objections are raised during the publication period, trademark registration is granted.
Trademark prosecution can be a complex and time-consuming process, but it is essential to obtain trademark registration to protect your brand. A trademark registration gives the owner exclusive rights to use the trademark in connection with the goods or services specified in the registration. These rights are enforceable against any third party who uses the trademark without the owner’s permission.
The Process
The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks. To obtain a trademark registration, applicants must apply with the USPTO.
The trademark application process can be divided into two parts:
- The examination process, during which the USPTO determines whether the trademark is eligible for registration.
- The registration process, during which the USPTO registers the trademark.
The USPTO website has a lot of information on trademark prosecution.
The Application Process
To apply for trademark registration, you must apply with the USPTO. The application must include:
- The name and address of the applicant.
- A clear drawing of the mark.
- A description of the goods or services that the mark will be used with.
- The filing fee.
The examination process begins when the USPTO receives YOUR application and assigns it to an examining attorney. The examining attorney will review your application to make sure it meets the legal requirements for registration. If the application does not meet the requirements, the examining attorney will issue an Office Action.
The Office Action
An Office Action is a letter from the USPTO that sets out the reasons why your application does not meet the requirements for registration. If you receive an Office Action, you will have six months to respond. If you do not respond, your application will be abandoned.
If you receive an Office Action, you can:
- File a revised application
- Abandon your application
- Appeal the Office Action
If you file a revised application, the USPTO will re-examine it to see if it meets the requirements for registration. If it does not, you will receive another Office Action. If you appeal the Office Action, you will need to file a brief with the Trademark Trial and Appeal Board (TTAB). The TTAB is a group of judges that hears appeals from trademark applicants. If you win your appeal, your application will be sent back to the USPTO for further examination.
The registration process begins after the examining attorney approves the application. The USPTO will then publish the trademark in the Official Gazette, and the trademark will be registered if no one objects within a period of 30 days. After the trademark is registered, the owner will need to renew it every 10 years to keep the registration active.
How We Can Help
Are you in need of trademark prosecution services? Look no further than Tim Billick and our firm TBillick Law PLLC. Tim has extensive experience in all aspects of trademark law and has successfully prosecuted hundreds of trademarks. He will work diligently to get your trademark registered and keep you updated on the status of your application. Contact us today by calling 206-494-0020 or use our convenient online form to send a message and get started on protecting your trademark.