What You Should Know about Prosecuting a Trademark

Owning and protecting a trademark can be complicated. Selecting, applying for, and prosecuting a trademark is easier when you understand the process.

Choosing a Trademark

A process known as clearance is used to determine if there are any potential problems that could make a trademark difficult or impossible to register, or leave you vulnerable to a claim of infringement. Clearance also provides information about how best to describe goods and services included in a trademark application.

Issues that are discussed with your attorney during the clearance process include:

• Whether a trademark is registerable
• Whether any third parties are using identical or similar trademarks
• Whether those identical or similar marks are for identical or similar goods or services
• How the description of goods and services should be described in the application to decrease objections and ensure smooth prosecution
• Whether previous litigation has occurred related to an identical or similar trademark

Trademark Application

Trademark applications must be drafted carefully and accurately to avoid defects that could affect the validity and enforceability of the registration. Information becomes a matter of public record and includes:

• Owner's name and address
• Word or design to be trademarked
• Filing basis (use, intent-to-use, foreign registration, etc.)
• Classes in which the trademark will be used and a description of the goods or services within each class
• Date of first use anywhere
• Date of first use in commerce
• Specimen for each class of goods or services

Prosecution of a Trademark Application

The process from application to issue of certificate of registration of a trademark takes approximately nine months. The examining attorney reviews the application for defects and determines if there is any confusion with existing or pending marks. If there are no problems, the trademark is approved for publication, which begins the 30 day period in which any party can oppose the registration or request an extension beyond the 30 days to do so.

Follow-Up

The responsibilities of a trademark owner do not end once a trademark is approved. Owners must monitor and enforce trademarks to ensure third parties are not using similar or identical marks for similar or identical goods and services. Trademark watch services can make the ongoing task easier. Trademark owners must also file a declaration showing a mark is still in use several times throughout the life of a trademark. The use of a trademark must be consistent and for the same goods and services for its lifetime.

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This article was published on 19 Dec 2014 and has been viewed 697 times
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