Trademark Law Basics, Part 3: What To Expect During The Trademark Prosecution Process


his is part three of the CDAS Trademark Law Basics series. If you missed the previous installments, they are available at the following links: Part 1, Why Register a Trademark?, and Part 2: Why Conduct a Trademark Search?

The process of trademark prosecution involves you and your trademark attorney filing an application with the United States Patent and Trademark Office (PTO) and, if necessary, responding to challenges. It also includes maintaining your trademark registration for years to come.

When to File

If you are already using your mark in connection with goods and services, we recommend filing a “use-based” application as soon as possible to protect your investment. If you are not already using your trademark in connection with goods or services, you may file an “Intent to Use” (ITU) application to establish priority while you get your business off the ground. An ITU application protects your mark while you launch your business, as long as you can demonstrate a bona-fide intention to use the mark (meaning that you have genuine plans to go ahead, and you’re not just trying to “reserve” the mark so nobody else can get it) and begin to make use within a prescribed period of up to three years. Except for your application and legal fees, there is no risk if you decide not to proceed.

In the U.S., a registration will issue only upon proving use in commerce. For ITU applications, you may file an Amendment to Allege Use. All applications will be examined, published, and may be opposed as discussed below. If your use-based application is not opposed, the PTO will issue a “Notice of Allowance.” From that point, you have three years to file a Statement of Use, which will lead to a registration.


Once an application has been filed, the PTO will conduct an “ex parte” examination, which means that this proceeding is between the PTO and you, as the applicant. The examiner will verify that your goods or services fall within the class(es) listed in the application. He or she will also assess whether the mark is a valid, distinctive trademark. Most importantly, the examiner will “check your work” to determine whether your trademark will create a likelihood of confusion with any existing marks or applications that were filed prior to your own. The examiner will also look for other problems, such as scandalousness of the mark, descriptiveness, whether it is primarily a surname, or whether it is functional. If any of these concerns are raised, the PTO will issue an “Office Action” which affords you a chance to respond. Most applications receive an Office Action of some type. However, if you have conducted a full search and work with an attorney, you are more likely to have caught any conflicts before the examiner does, therefore reducing the changes of receiving an Office Action. The Wall Street Journal recently reported that trademark registration applications represented by an attorney are 50% more likely to be approved.

Receiving an Office Action does not mean that you will not be able to get your trademark registered. A trademark attorney can help you overcome initial refusals, whether by using argument, revisions to the application, or a combination of both. The examining attorney’s decision can also be appealed to the Trademark Trial and Appeal Board for review.

It takes about 12 to 18 months to register a trademark that is not rejected by the PTO or opposed by a third party, as discussed below. Your attorney can further information about the cost of a response to an Office Action, which is typically billed at an hourly rate rather than a flat fee due to the highly particularized nature of each Office Action, although your attorney often can provide an estimate for response so you can decide how to proceed.


The particulars of an application are made available to the public through publication in the Official Gazette (which is published every Tuesday and is available to trademark holders and attorneys in print and online, and which can be monitored manually or through a third-party vendor). An opposition period begins at publication and lasts for 30 days. During that time, oppositions may be filed by any third party who has a reason to believe that its interests will be harmed by your registration (third parties may also file extensions of time to oppose for a period of up to 90 days). Because your mark may conflict with registered marks that the examiner may have missed, common-law (unregistered) trademarks or state trademarks, or because registration might damage a third-party in some other way (for example, because it is disparaging, or may be a term that competitors need to use), your registration might be opposed by a third party for most of the same reasons that a PTO examiner would deny an application.


Within five years after your registration, third parties may petition the PTO to cancel your registration on a variety of grounds, substantially similar to the grounds on which applications may be opposed. Grounds for cancellation proceedings may include allegations that your mark is descriptive or generic, misleading or deceptive, disparaging, or has not been used in commerce for at least three years. After a declaration of incontestability is filed (usually after five years on the registry), a registered mark can be challenged by another party only on grounds that it is generic, functional or abandoned, that it misrepresents the source, or was obtained fraudulently.


The initial term of a registration is ten years from the registration date. Periodic statements of use and other mandatory filings are required between the fifth and sixth years after the registration issues. A renewal application must be filed prior to the expiration of the ten year anniversary date from the issuance of the registration. Failure to file this declaration and pay the required fees will result in the cancellation of the registration. These services – including sending you reminders of deadlines – can be provided by your trademark attorney on an ongoing basis.

A Word of Caution

Regrettably, because the PTO registry is a public record, it has become common for ill-intended individuals to contact trademark registrants with official-looking demands for bogus fees. These activities are being targeted by lawsuits and federal authorities, but have become yet another financial pitfall awaiting registrants who choose to navigate the trademark prosecution process without representation.

According to the PTO’s published warning, all official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “” Whether or not you choose to be represented by CDAS, we urge you NEVER to remit fees in response to a third party not known by you unless you have verified with your own attorney or the U.S. Patent & Trademark Office that the party is legitimate.

If you have any questions about this article, please contact an attorney in the CDAS Trademark and Brands Practice Group.

Materials on are provided for informational purposes only, do not constitute legal advice, do not necessarily reflect the opinions of CDAS or any of its lawyers or clients, and are not guaranteed to be complete, correct, or up-to-date. is not intended to create an attorney-client relationship between you and CDAS.

Filed in: Digital Media, Legal Blog, Start-Ups, Trademarks and Brands

February 25, 2013