Trademark Prosecution

Approximately three months after a trademark application is filed, it will be examined by an examining attorney at the Patent and Trademark Office.  The examining attorney will review the application for compliance with procedural requirements and will conduct a search of the registered and pending marks to determine whether the applied-for mark would be likely to cause confusion with a registered mark.  The examining attorney will issue an office action should it be determined that the application as filed cannot be approved for publication.  The applicant is allowed six months to respond to the office action.  If the response is deemed insufficient, the examining attorney will issue a second, typically final, office action setting forth why the application cannot be approved for publication.  The applicant will be allowed six months to place the application in condition for publication.  If the application cannot be placed in condition for approval, the application may appeal to the Trademark Trial and Appeal Board, which will determine whether the application should be approved for publication.  The applicant has the right to appeal an adverse decision of the Trademark Trial and Appeal Board to the courts, frequently to the Federal Circuit Court of Appeals.

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