An Overview of Trademark Prosecution in the US

Trademark prosecution is an essential part of safeguarding your intellectual property rights. Contact the Evergreen Valley Law Group and get help now!

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What Is Trademark Prosecution?


Trademarks are unique symbols or words used to represent businesses or products. They can be any word, phrase, symbol, design, or combination of these used to identify specific goods or services, and they make your business stand out from competitors. For instance, the big ‘M’ that McDonald’s uses for its signage is a registered trademark for the company and has become synonymous with the brand; you see the ‘M,’ and you know it’s ‘them.’

Such symbols are regarded as intellectual property and, as such, cannot be used by third parties without the owner’s license. However, to get the maximum protection available under the trademark law, such marks must be registered and the trademark approved by the United States Patent and Trademark Office (USPTO).

Thus trademark prosecution in this context refers to the entire trademark application process from the filing to the final approval and publication. The term also encompasses all the steps to be taken by the parties involved, so if you’re interested in securing your business brand, mark, or symbol, it is important that you’re aware of all that is required of you. Read on for further insight into the trademark prosecution process and how trademark or patent attorneys in California can help you.

How Trademarks Work


A trademark is extremely useful for businesses, and its registration can protect your brand against fraud and counterfeits of your products or services. It helps to distinguish your product or service from similar brands in the market.

Trademark ownership is automatically conferred as soon as you use that sign or symbol for distinguishing/marketing your brand/goods. However, the right is limited to the geographical area where you do business. To broaden the scope of protection for your trademark geographically and also notify the public about your exclusive interest, you’ll need to take steps to register the specific trademark.

Generally, you can apply for a trademark for any physical or pictorial mark that distinguishes your business from others, including the following:

  • Product and service names
  • Logos and artwork
  •  Distinctive designs
  • Taglines or slogans.

Once your application is successful, no other individual or organization can use your registered trademark if you keep the paperwork up to date and pay the required maintenance fees.

If someone else uses your trademark without your knowledge or permission, you can protect your intellectual property by asking your attorney to issue them a cease and desist letter or suing them in court for trademark infringement. In such cases, your trademark attorney can help you determine the appropriate course of action and help you get compensation for such infringement in applicable cases.

    The Trademark Prosecution Process

    The steps in the trademark prosecution process are summarized as follows:

    Determine Eligibility

    Trademark registration offers a specific kind of intellectual property protection for business brand names, symbols, or logos. If you seek to protect anything other than these, then trademark protection might not be appropriate for you. Instead, consider getting protection under the other classes of IP; patents, copyright, or domain registration.


    Choose Your Trademark

    As you select your brand symbol or logo for registration, you’ll need to consider whether such a mark can be registered by the USPTO and the difficulty of enforcing the mark even if the registration is successful. Before you make your decision, consider searching the USPTO database to determine whether anyone else has a registered mark similar to yours. If that is the case, you might need to decide on another symbol, as the similarity you found could adversely affect the success of your application.

    File the Application

    You can file your trademark registration application online by creating an account on the USPTO portal and accessing the trademark electronic application system. At this point, you’ll also be required to pay the approved filing fees. You can find out more about the necessary fees here or alternatively contact an experienced trademark attorney for specific details.


    USPTO Processing

    After you have filed, the USPTO will assess your application to determine whether it meets the filing requirements. The application is assigned to an examining attorney if the assessment is successful.

    The attorney would again review your application and verify that it complies with all the relevant laws and that the appropriate filing fees have been paid. They would also examine your chosen trademark to ensure that it is valid and distinctive when compared with existing trademarks.

    If the trademark examiner identifies any issues with your application, they will issue an “office action,” to you, which is a letter explaining the deficiencies in your application.

    You can respond to the letter on your own or with the help of a team of experienced trademark attorneys. However, you need to provide a response within three months from the date when the office action was issued; otherwise, the application will be deemed abandoned, and you may need to start the process all over if you still wish to register the trademark.


    Approval and Publication

    If the examining attorney has no issues with your application or you’ve sorted out those they already identified, then your trademark will be approved for publication in the official gazette.

    If no opposition to the trademark is filed within 30 days, the USPTO will register the mark and send you a certificate of registration. On your part, you’ll need to file the necessary maintenance papers to keep the registration alive.

    How Intellectual Property Attorneys Can Help

    The trademark prosecution process is complicated and may be difficult for an inexperienced individual to handle appropriately. The success of the process depends on the strength of your application, and as such, an application for a trademark that does not comply with the USPTO requirements or is full of errors is likely to be denied.

    Working with an experienced Bay Area IP attorney relieves you of such concerns. With their knowledge of trademark laws, your attorney can help you determine the eligibility of your trademark for registration and also handle the trademark prosecution process on your behalf from start to finish.

    Working with an IP lawyer is important, especially if you’re a foreign national or corporation seeking to do business in the US. When you have a US-registered IP attorney representing you, your physical presence is not required, and you can achieve your goal of trademark protection in the US from any location in the world. 

    Get Help With Trademark Prosecution at the Evergreen Valley Law Group


    If you have further questions on registering a trademark in the US, the skilled intellectual property lawyers at the Evergreen Valley Law Group can help.

    We are an intellectual property law firm operating in California and Bangalore, India, and we offer a wide range of IP services, including trademark and patent prosecution.

    Over the years, we have developed a unique trademark prosecution strategy that involves conducting comprehensive trademark searches and clearances before filing. These preliminary investigations help us to ascertain whether a trademark is registrable before beginning the trademark prosecution process.

    This makes it easy to spot any issues that could hamper the registration process and rectify them before filing the application. This time-saving and cost-effective approach has helped us achieve significant trademark prosecution success for our clients, and we are willing to do the same for you. Schedule a free initial consultation with us to get started.