Trademark Prosecution

1. Preliminary Trademark Search and Clearance

Before filing an application, it’s crucial to research existing trademarks to ensure your mark is unique and not already in use. A comprehensive trademark search helps:

• Avoid conflicts with existing trademarks.
• Increase the chances of USPTO approval.
• Reduce the risk of opposition or litigation down the road.

While businesses can conduct basic searches using the USPTO’s Trademark Search Tool , a more thorough search—including state trademarks, common law marks, and domain names—is recommended. At Kinhal Law PLLC, we perform in-depth trademark clearance searches to identify potential risks before filing.

2. Filing a Trademark Application

Once the mark is cleared, the next step is filing a trademark application with the USPTO. Applicants must decide between:

• Use-Based Applications (“Actual Use”) – If the mark is already in use in commerce.
• Intent-to-Use Applications – If the mark is not yet in use but there is a bona fide intention to use it in the near future.

The application must include:

• The owner’s information (individual or business entity).
• A clear representation of the trademark (word mark, logo, or slogan).
• A description of goods/services associated with the mark.
• A specimen (if the mark is already in use) showing real-world use.
• A filing fee, which varies based on the number of classes of goods/services.

After submission, the USPTO assigns an examining attorney to review the application.

3. Examination by the USPTO

The USPTO reviewing attorney examines the application to determine if the mark meets legal requirements for registration. With the current backlog at the USPTO, this review typically takes about one year from the filing date.

The examining attorney checks for:

• Conflicts with existing registered trademarks.
• Whether the mark is generic or descriptive.
• Proper classification of goods and services.
• Any procedural issues that need correction.

If no issues arise, the application moves forward. If there are problems, the USPTO issues an Office Action, requiring a response from the applicant.

4. Responding to Trademark Office Actions

If an Office Action is issued, the applicant must respond within three months (or request an extension for an additional three months).

Common Office Action issues include:

• Likelihood of Confusion Refusals – If the USPTO finds a similar existing mark.
• Descriptiveness Refusals – If the mark merely describes the product/service.
• Specimen Issues – If the proof of use does not meet USPTO requirements.
• Technical Errors – Such as incorrect ownership details or classification.

At Kinhal Law PLLC, we handle Office Action responses strategically, crafting strong legal arguments and submitting evidence to overcome refusals.

5. Publication for Opposition

If the application passes examination, the USPTO publishes the trademark in the Official Gazette, a weekly online publication. This allows third parties 30 days to oppose the registration if they believe the mark infringes on their existing rights.

If no opposition is filed, the application moves forward towards registration. If an opposition is filed, the case is heard before the Trademark Trial and Appeal Board (TTAB), where both parties present their arguments.

6. Trademark Registration

If no opposition is filed (or the opposition is unsuccessful), the trademark moves to the registration phase:

• For “Use-Based” Applications – The USPTO registers the mark and issues a Certificate of Registration.
• For “Intent-to-Use” Applications – The USPTO issues a Notice of Allowance, requiring the applicant to file a Statement of Use within six months (extendable up to three years).

Once registered, the trademark is legally protected nationwide, giving the owner exclusive rights to use the mark in commerce.