Trademark Written in Wooden Cubes

Requirements for a Trademark Examination

Ream Law Firm, L.L.C. Aug. 29, 2023

When you work hard to develop a profitable product or service, you’ll need to do everything you can to safeguard it. One way to do this is through trademarks. However, most business owners and entrepreneurs aren’t familiar with the process of obtaining a trademark with the United States Patent and Trademark Office (USPTO) and may wish to seek the help of an experienced attorney. Although a lawyer can help you with all steps involved in USPTO trademark applications, a lawyer can be especially useful in the examination phase. 

If you’d like to speak with a trademark attorney and are in the Kansas City, Missouri area or the KC metro area—including Johnson County, Kansas and Jackson County, Missouri—reach out to Ream Law Firm, L.L.C. for help. 

What Is a Trademark Examination? 

A trademark examination is the second phase of the trademarking process that occurs after you submit your application. Here, your case will be assigned to an examining attorney who will look at your application in depth to see if it meets the criteria for being issued a trademark. After this is complete, they will issue their decision. 

The Trademark Examination Process & Requirements 

Although the actual process for trademark examination is fairly straightforward, it’s important to understand each step to give yourself a better chance at a successful application.  

Role of the Examining Attorney 

The attorney’s main role is to check and see if the trademark meets the requirements set out by the USPTO, and they will generally follow the same process for each application:

  1. Their first step is to perform trademark searches. This entails searching a database of registered and pending trademarks to see if your trademark conflicts with any of them.  

  1. Next, they will research your proposed trademark to discover what meaning it has in your particular industry. 

  1. Now, they will look at your application to see what class of goods or services you’ve identified. There are 45 different categories of trademarks and yours must be registered in the correct class and not compete with any existing trademarks. 

  1. After the above three steps have been completed, the examining attorney will check to see that you’ve complied with the requirements for filing.  

If everything is approved, they will issue an approval for publication. If they find anything wrong or not in compliance, they will issue an office action.  

What if my Trademark’s Registration Is Refused? 

There are a few main reasons your trademark may be denied—but just because your application was initially refused doesn’t mean you’re out of options. If you do receive an office action, it will contain details about why you were denied and what you can do to fix your application. It will also contain a deadline that you have to submit your response by. 

If, after you’ve submitted a revised application, it’s still denied, you’ll receive a final office action which can only be addressed through a USPTO trademark application appeal. If you haven’t already reached out to an attorney by this point, it’s highly recommended that you do so. 

How a Trademark Attorney Can Help 

Because the examining attorney working for the USPTO is a fully licensed lawyer, you can be assured they understand trademark law inside and out. Therefore, if your trademark registration is refused and you wish to appeal it, you’ll need a partner who’s equally as capable as the examining attorney. By working with a skilled trademark attorney, you’ll have the best chance of refuting their decision with solid legal evidence that you would not be able to accomplish on your own. 

Additionally, your attorney can advise you of any issues with your application and can assist you in revising them to re-apply. They may also be able to help you with any International Trademark Bureau applications. 

Knowledgeable Legal Guidance: Ream Law Firm, L.L.C. 

The trademarking process can be complex. If you’re in the Kansas City area and would like to learn more about this process and what to do if you’re denied in the examination phase, contact Ream Law Firm, L.L.C. to schedule a consultation. The firm is proud to serve individuals and businesses in the Kansas City, Missouri area, including Johnson County, KS and Jackson County, MO.