Making sure everything is as it should be.
Time to Complete: 9 – 24 Months.
In the Fourth Step, the Trademark Office and the public examine your trademark application.
It begins with a Trademark Office examination by an Examining Attorney (the “EA”). The EA will register rejections and objections in one or more letters called Office Actions. You must respond to these correctly to keep your application alive. Once (and if) the EA believes that your application is in order, it is Published.
Next, the public has the opportunity to examine your mark by lodging an “Opposition” to your mark’s registration. Here’s where preparation really pays off, because carelessly filed trademark applications can trigger unnecessary Opposition Proceedings. And these proceedings can be lengthy, and expensive.
“It’s like watching my son play football.”
— One Client Just About to Open an Office Action
Your hopes, expectations and emotions rise and fall with every passing day. Your trademark application will soon be put to the test with a formal Examination inside — and possibly outside — the Trademark Office.
It begins with a wait. One client described it like waiting in line for a ride at Disney World: every time you think you’re about to arrive, you turn the corner into another winding room. And, kind-of like Disney, there are ways to make your trademark case “special” (literally: it’s called a “Petition to Make Special”), especially if you’ve discovered an infringer, entered a lawsuit involving your trademark, or need the US Registration to get a foreign registration. But, this is expensive and rare.
More likely, you’ll have to wait your turn to see what the Examining Attorney thinks — which usually takes nine months to a year.
The Examination and the “Office Action.” The Trademark Office will likely send a formal letter to your attorney; this letter is called an Office Action. Sometimes the Office Action refuses to register a mark for reasons that are largely formalities, such as ambiguity about an applicant or a needed “disclaimer.” At other times, the application is attacked because the description of goods or services sold (or the description of the specimen) appears to be wrong. Sometimes the specimen itself is not acceptable. Applicants without an attorney find these confusing!
The mothers of all rejections are the “likelihood of confusion” rejection and the “merely descriptive” rejection. Overcoming these often requires the proper presentation of evidence (and sometimes even more), but that’s a discussion for another day . . .
Public Examination and the “Opposition.” After the Trademark Office allows the application, but before the mark registers, the public may still challenge it by filing an “Opposition.” An Opposition is a lot like a “mini-trial” and can include gathering evidence, depositions and more. When you’re the Applicant, you want to avoid these at all costs!
At this stage, you need an attorney who:
- speaks and understands “Trademark Office” language;
- keep you informed and involved in the process;
- knows the arguments that can work, and those that won’t;
- can steer your application around unseen hurdles; and
- knows what to do next if things don’t go as planned.
And, you don’t want to:
- make guesses about how to respond — you often get just one shot;
- make statements that will hurt your application;
- submit responses that could legally endanger your business;
- miss a deadline; or
- spend $20,000+ more than you have to at a “big” law firm.
After all, you’re business is going places, and you can’t afford for your brand to stall-out and die in the Trademark Office.
We help businesses with owners and managers like you to get trademarks registered, and stop competitors from raiding your customers.
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No Cost or Obligation.