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Collier Legal

Trademark Prosecution

Trademark prosecution is the process of responding to trademark office actions, making amendments to a trademark application, and pursuing the issuance of an applied-for mark. Prosecution requires more time and more expertise than the initial application. This is due to the nature of responding to an office action.

patent 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.

Maintaining And Renewing A Trademark

Once a trademark is issued, it must be maintained and renewed at set intervals. The intervals for trademark maintenance and renewal filings are:

  1. Between year 5 and year 6 after registration
  2. Between year 9 and year 10 after registration
  3. Every 10 years after the second interval (starting between year 19 and year 20 after registration)

The first filing interval requires submitting a Declaration of Use, specimen of the mark in use, and a fee ($225 per class of goods). Every subsequent filing requires submitting a Declaration of Use, specimen of the mark in use, an Application for Renewal, and a fee ($525 per class of goods).

Work With An Experienced Trademark Prosecution Lawyer

Trademark prosecution is much less stressful and time consuming when you work with an experienced attorney. Our trademark lawyers have vast experience with trademark prosecution and getting applications issued.

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