Application processing (aka “prosecution”)

The phrase “trademark prosecution” refers to the various communications and processes that are conducted between the U.S. Patent and Trademark Office and the trademark attorney in reviewing the application on the merits and in determining whether and under what circumstances the trademark application will be allowed to issue.

Typically, six to twelve months after the trademark application has been filed, the U.S. Patent and Trademark Office will conduct a search of prior trademarks (“prior art”) on record at the Office to determine if it believes a trademark should be issued on the application as filed.  If the Examiner locates prior art that he or she deems problematic, he or she will issue a rejection of the application, citing the prior art references which he or she believes makes issuance of the case improper.  Otherwise, he or she will “publish” the case.

Initial rejections are extremely common due to the large numbers of trademarks on file at the U.S. Patent and Trademark Office.  However, in a high percentage of cases, the applicant and his or her trademark attorney can tender arguments to the Examiner regarding the prior art cited or perhaps make changes to the identification of goods / services language initially presented and secure agreement by the Examiner to publish the case.

Some clients are dismayed at the occurrence of this back-and-forth dialogue between the Examiner on the one hand and the client and his or her trademark attorney on the other, but, in point of fact, this dialogue demonstrates the genius of the trademark system.  In a well-run trademark system, the Office charged with examination of applications shouldn’t hand out trademark monopolies like candy; rather, the Examiners should thoroughly search the prior art, and, if they are able to locate prior art references that appear to be relevant to registrability, they should reject the application on those references so as to provoke a thoughtful discussion about the scope of the applicant’s claimed mark.  This is precisely what happens week in and week out at the U.S. Patent and Trademark Office, and there is simply no doubt that the resulting portfolio of carefully examined, and thoughtfully issued,U.S. trademarks more fully and completely serves the long-term public interest.