Trademark Prosecution

Trademark applications are somewhat short, but have several components with legal consequences. This includes the type of application (standard characters vs special characters), a statement of use, classifications of goods, descriptions of goods or services, a mark specimen, and various descriptions of the specimen. Most of these application parts require manual entries from an applicant. Each manual entry affects an applicant’s ability to protect their mark in a desired market.

When a USPTO examining attorney examines an application, they typically make objections or rejections directed towards the manual entries of an application. These objection and rejections are called office action. When an office action is issued, the applicant must respond to each and every issue raised in the action. Otherwise, the application will be denied.

It is common for office actions to raise multiple issues in an application. Thus, a complete response requires amending multiple parts of an application and then drafting a fully responsive description of how the issues were addressed.