What happens during prosecution of a trademark application?

On Behalf of | May 9, 2022 | Trademarks |

Trademark prosecution is the method of applying for the registration of your trademark with the United States Patent and Trademark Office.

It may take 12-18 months to register a trademark, assuming that the Examining Attorney does not refuse registration and third parties don’t oppose your application. There are several steps to the process.


When you file your application, the PTO will assign it a serial number and assign it to an Examining Attorney who will perform a search and determine if the mark is registrable. The Examining Attorney determines if your mark is likely to cause confusion in view of previously registered marks by others. He or she will also make sure that your mark is not merely descriptive or generic.  If the Examining Attorney refuses your initial application, you will have six months to respond. If your application is then finally refused you may appeal to the Trademark Trial and Appeal Board (TTAB).


If the Examining Attorney finds no issues with your application, the PTO will publish the details in the Official Gazette, a publication for trademark holders and attorneys. Third parties have 30 days from the date of publication of your mark to oppose your application to register the mark. An Opposition is a formal litigation before the TTAB. If there is no opposition, the PTO will register your trademark.


Your federal registration will remain in force for ten years. You will need to file a Declaration of Use between the fifth and sixth-year anniversary of registration to keep your registration in force. If you fail to submit the required paperwork or pay the associated fees, the PTO will allow your registration to lapse. You can renew your registration for additional ten-year terms as long as you continue to use your trademark in commerce.

Intellectual property law is complex, and to avoid unnecessary mental and financial stress, it is important to conduct thorough research before filing your application.