In 1971, Nike paid just $35 for its iconic “swoosh” logo. That modest investment laid the groundwork for decades of trademark protection, transforming a simple curved line into one of the world’s most valuable brand assets.

Success can ironically threaten a trademark’s protection. Band-Aid and Kleenex faced this challenge when their trademarks risked becoming generic terms. Xerox also waged a campaign to prevent its name from following the fate of former trademarks like aspirin and thermos.

These cases underscore a crucial lesson: securing a trademark is only the beginning. The real work lies in the strategic vigilance required to maintain and defend it. This article will explore trademark prosecution and the proven methods to maintain and defend your trademark post-registration.

What is Trademark Prosecution?

Trademark prosecution is the legal process of applying for and maintaining a trademark. It includes preparing and filing trademark applications, ongoing legal maintenance, and defending the trademark against any opposition.

Don’t let the legal term scare you — most of this work happens at a desk, not in court. Your legal team handles research, paperwork, and potential conflicts with existing trademarks before filing.

Getting approved feels great, but that’s when the real work starts. Legal teams track renewal dates, watch for copycats, and step in when others try to use similar marks. Smart businesses treat trademark protection as an ongoing responsibility – not a file-and-forget task.

Why is Trademark Prosecution Important?

Proper trademark prosecution keeps your brand assets safe and valuable. Without it, competitors could use similar names, logos, or slogans — confusing your customers and damaging your reputation.

Companies spend millions building brand recognition. Solid trademark prosecution protects this investment. It stops others from riding on your success or diluting your brand’s power in the marketplace.

Legal rights need maintenance to stay strong. Skip the proper prosecution steps, and your trademark could become vulnerable to challenges or even abandoned. Many businesses learn this lesson the hard way, losing rights to valuable marks because they missed renewal deadlines or failed to defend against infringement.

Trademark prosecution also helps avoid costly disputes. Good research and monitoring catch potential conflicts early before they become expensive legal battles. Plus, a well-maintained trademark record makes it easier to license your brand or sell your business later.

Key Steps in Trademark Prosecution:

Trademark prosecution involves several key steps, each vital in securing and keeping your trademark rights. Getting any of these steps wrong can derail your trademark protection or create problems in the future.

• Filing the Application

Filing a trademark application sets the foundation for your brand’s legal protection. You’ll need to nail down exactly what you’re protecting — whether it’s just the name, a specific logo design, or both. 

The application also needs proof you’re using the mark in real business dealings, not just holding onto it for later, as well as a range of supporting evidence. Before filing, background checks are necessary to ensure your potential mark does not infringe on anyone else’s trademarks.

• Responding to Office Actions

Almost every trademark application gets some pushback from USPTO examiners — it’s just part of the process. These office actions point out problems ranging from simple fixes (like tweaking your description) to major roadblocks (like conflicts with existing marks). 

Each response needs careful handling because you only get six months to address the concerns. If you miss that deadline, your application could be rejected altogether, leaving you back at square one.

How you respond to these office actions can make or break your application. Sometimes, you must submit new evidence, change your description, or explain why your mark doesn’t conflict with others. 

• Publication for Opposition

Once your application passes the examiner’s review, it is published in the Official Gazette of the USPTO for 30 days. This publication informs other businesses that you’re claiming rights to this mark. 

During this month-long window, anyone who believes your mark might damage their business can file an opposition. They might claim your mark is too similar to theirs, that it describes their products, or that it could confuse customers. Most applications will not encounter an issue at this stage, but if someone does oppose your mark, you’re looking at a legal proceeding similar to a mini-trial. 

You’ll need to defend your right to register the mark, which can mean showing evidence of how long you’ve used it, proving there’s no chance of confusion, or arguing why both marks can exist in the marketplace. While oppositions can be costly and time-consuming, winning one gives you stronger rights because you’ve already beaten a challenge to your mark.

• Final Registration

Getting your trademark registration certificate feels like crossing the finish line after a long race. That piece of paper means the USPTO officially recognizes your exclusive rights to use the mark nationwide. 

You can now put the ® symbol next to your mark, which tells competitors and customers that you own it. Plus, federal registration gives you automatic access to federal courts if you need to sue someone for infringement.

• Maintaining the Trademark

A registered trademark needs regular upkeep, and trademark prosecution includes this continued process. Between years 5 and 6, you must file a Declaration of Use, proving you still use the mark for the goods and services listed in your registration. If you skip this filing, your trademark may be cancelled, a process that’s very challenging to reverse. The same happens if you miss the renewal deadline between years 9 and 10.

These maintenance filings also clean up registrations that aren’t being used anymore. You’ll need to show current examples of how you’re using the mark in commerce. If you’ve stopped using your mark for some products or services, you must remove those from your registration. Many businesses lose their marks because they forget these deadlines or don’t budget for the fees. 

• Defending the Trademark

When you own a trademark, you must stay alert for potential infringers. You’ll need to monitor new trademark applications, watch what competitors are doing, and check online marketplaces for copycat products. When you spot someone using a similar mark that might confuse customers, you’ve got to act fast. 

Sending cease-and-desist letters, filing oppositions, or taking legal action are crucial parts of trademark prosecution, and they demonstrate that you’re serious about protecting your rights. If you don’t defend your mark, stopping infringers later becomes harder.

Your trademark can actually become worthless if you let too many people use similar marks without challenging them. Courts might decide you’ve abandoned your rights or that your mark has lost its ability to identify your products. 

Wrapping Up

A trademark is a legal asset, and as such, there’s legalistic attention to detail across the whole process. From choosing the right mark to responding to USPTO office actions, each step needs careful attention. Effective trademark prosecution is best managed by professionals — trademark attorneys and experts to ensure that the ‘T’s are crossed and the ‘I’s are dotted.

Ready to protect your brand? Our premium Trademark Research service evaluates your potential names, logos, and taglines — that is, your foundational brand assets — and flags anything that might be a concern during trademark prosecution.

Frequently Asked Questions

What is the difference between prosecution and litigation?

Trademark prosecution is the process of registering your mark with the USPTO, from application through registration and maintenance. Trademark litigation happens in court when there’s a dispute over trademark rights, like someone suing for infringement or trying to cancel someone else’s registration.

Is it necessary to get an attorney for a trademark?

While individuals can file their applications, the USPTO requires foreign companies to have a U.S.-licensed attorney. Even for U.S. applicants, the complexity of trademark law and high rejection rates make attorney assistance valuable as they spot potential problems early and know how to respond to USPTO rejections effectively.

How long does the trademark prosecution process take?

A straightforward trademark application typically takes 8 -12 months from filing to registration. However, if the USPTO issues office actions or someone opposes your mark, the process can stretch to 18 months or longer.

What are “office actions” in trademark prosecution?

Office actions are official letters from USPTO that raise issues with your trademark application. These might point out problems like the likelihood of confusion with existing marks, descriptiveness issues, or technical filing requirements that need fixing — and you must respond within six months.