Patent Search

Trademark Application Process: Prosecution

Intellectual Property FirmsAlthough trademark prosecution varies somewhat depending on jurisdiction, the basic procedure is more or less the same. Within a few months after submission of a trademark application, the reviewing examiner at the trademark office may send a communication regarding required information, objections to the application, and/or suggested amendments to the application. Such correspondence is often called an office action (OA), or a notice of irregularity, and is sent in the majority of trademark cases to the applicant. The applicant must reply within the provided time limit by either correcting the deficiency, or arguing against the opinion of the examiner. Intellectual property firms specialize in such activities, while considering the overall goals of an IP strategy.


If the examining attorney is satisfied with the response or amendment to the office action, the trademark will be approved for publication. On the other hand, should it be determined that the response does not resolve all outstanding issues in the office action, the examining attorney will issue another office action with the remaining objections. The applicant may attempt to correct all deficiencies, or if the remarks of the examiner are not agreeable, the applicant may appeal the decision of the examining attorney.


There are many types of objections which can be raised in an office action. Some of the more common ones are as follows:


  • The application has procedural deficiencies, including formalities such as mistakes in address, name, and class designation. Such objections are easily correctable.
  • The subject mark is confusingly similar to a previously-filed or registered mark. To overcome this objection, the applicant generally argues that the cited marks are distinguishable in appearance, sound, or overall commercial impression, that the marks are used in unrelated channels of trade, or that the involved goods and services are distinct.
  • The definition of the goods and services is too broad and indefinite. The applicant is invited to amend the description by providing more details.
  • The proposed mark is descriptive. A trademark can overcome a “descriptiveness” refusal by presenting substantial evidence that the market recognizes applicant’s goods and services by this trademark. Evidence or significant showings of ongoing and sustained advertising across the country may be required.
  • The subject mark, or a portion of it, is generic. To defeat such an objection, one must either disclaim the part of the proposed mark that is generic, or present evidence that the trademark is not generic.
  • The trademark applied for is merely a surname. Some of the factors to consider are how common the name is, whether the name has any recognized meaning other than a surname, and if it has the “look and feel” of a surname.


In responding to an examiner’s objection to register a trademark, especially when including arguments that are corroborated by evidence, one must be cautious not to limit the description of the subject goods and services any more than required to obtain a registration.


Once the examiner’s objections are overcome, the trademark application is approved for publishing. At this time, one may receive communication from other registered mark-holders, or their attorneys, objecting to the proposed mark by claiming that it is very similar to the opposer’s trademark, and that the issuance of the new mark is likely to cause confusion to consumers. Such correspondence will usually ask the applicant to withdraw the application, or certain classes thereof, in one or more jurisdictions, or threaten formal opposition before the relevant trademark office(s).


One should carefully consider the merits of the opposer’s claims, or lack thereof. It is advisable to consult a trademark attorney to find out the best options in handling the objection. Often the objection can be overcome by an explanatory response as to why the opposer’s point of view is not accurate.


However, if the merits of the objection are strong, one must carefully consider and balance many factors such as the value of the application at hand, the amount of money and effort spent on the trademark, the risks and efforts involved if the mark is withdrawn and the name has to be replaced, how famous is the opposer’s mark, the length of time the opposer has used its mark, the jurisdictions and the commercial fields in which the opposer’s mark is used, the potential for reaching a settlement with the opposer, legal costs involved, and chances of winning against the opposer, if a formal opposition is initiated. Intellectual property firms assess the merits of such actions in advising clients of their options and the impact on their IP strategy.


If an opposition is raised, the applicant must file an answer within a specified time limit. The opposition procedure will then continue in a process similar to a civil litigation. Often, the opposition is resolved between the parties by a settlement agreement, and the opposition is dismissed. Such a settlement agreement may involve terms requiring cancellation of the trademark application; otherwise the mark may proceed to issuance.


FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark filings. On Your Mark, Get Clearance, Go!