Trademark Prosecution

It generally takes about six to eight months for a trademark application to be approved.  See Trademark Application & Post-Registration Process Timelines.

After the application has been filed, the USPTO issues a filing receipt, typically within a few days.  This may be followed by a Notice of a Pseudo Mark (i.e., a mark that is spelled similar or phonetically equivalent to the applicant’s mark). 

An Examining Attorney will examine the application and conduct a search for registered marks. 

An application to register a mark may be refused for the following reasons:

The mark is descriptive or deceptively misdescriptive

The mark is immoral, deceptive or scandalous.

The mark disparages or falsely suggests a connection with a person, whether alive or deceased, institution, belief, national symbols, or brings them to contempt or dispute. 

The mark includes a government (i.e., state, federal, or foreign) indicia, such as a flag or coat of arms.

The mark uses the name, portrait or signature of a person, without the person's consent, if the person is alive, or without the widow's/widower's consent, if the person is deceased.

The mark is sufficiently similar to a mark already registered so as to cause confusion, mistake or deceive as to the source of goods or services.  This type of refusal may be overcome by filing a coexistence agreement with the USPTO.  A coexistence agreement is an agreement wherein parties recognize the right each has to its respective mark and agree to terms in which they may exist together.  See Sample Coexistence Agreement.

The mark is geographically descriptive or misdescriptive as to the origin of the goods or services. 

The mark is primarily a surname.

The mark is functional

If the application is not subject to refusal and is otherwise in good order, the application will publish for opposition.  This may occur within three to six months

If no opposition is filed within 30 days of the date of publication, a certificate of registration will issue in connection with use-based applications.  A Notice of Allowance will issue in connection with intent to use applications, in which case, the applicant will have six months to file a statement of use.  The period for filing a statement of use may be extended for up to six consecutive six-month periods (i.e., up to 36 months).

If you have a question about trademark prosecution, askme at thedford@askmeip.com.