Trademark Prosecution Search: How Past Cases Can Support Your Mark Applications

If you are running a product-based business, you are already aware of the criticality of protecting your products using registered trademarks. The first step towards obtaining such rights is by filing trademark applications with the relevant jurisdiction for examination. Although applicants take all the necessary steps to comply with the trademark rules while filing, ever so often, they commit mistakes leading to rejection of their applications. Consequently, they start looking for other mark options for their products. Instead of doing this, however, they should look into the past trademark prosecution cases, similar to theirs, to get an idea on how to obtain the marks they desire.

The following article discusses everything that one needs to know about searching such past trademark prosecution cases to support filed applications.

Understanding Trademark Prosecution

Before we discuss about trademark prosecution searches, let us first learn about the general trademark prosecution process.

Trademark Prosecution is a two-way interactive process between an applicant and the trademark office (examiner) to obtain a mark. A critical first step in this process is the examination of the mark application to determine whether it meets the eligibility criteria. In case the criteria are not met, the designated examiner sends an Office Action (OA) citing the errors or issues in the application. The applicant must respond to the OA within the stipulated period to secure a trademark.

When Should You Search for Previous Trademark Prosecution Cases?

In case a mark application is rejected by the examiner, the applicant must look for ways to support his/her proposed mark before discarding it. One effective way of doing this is by searching for previous trademark prosecution cases that are similar to his/her prosecution case. This is because such cases can provide evidence to back the proposed marks.

How Can Searching for Past Trademark Prosecution Cases Benefit You?

Fig. 1: Advantages of Conducting Trademark Prosecution Searches

1. Make Informed Decisions – Performing trademark prosecution searches not only help you in deciding whether to respond to the examiner’s objection but also whether you need to challenge that objection at the Intellectual Property Appellate Board (IPAB). After conducting the searches, you can prepare a report to present your case for defending your trademark in front of the IPAB judge.

2. Accelerate the Trademark Grant Process – This search can also help you in speeding up the trademark prosecution by getting your point across quickly. To help you understand this better, here’s an example. A trademark attorney (representing a client) received a final objection on the proposed trademark from the examiner. He, however, was not satisfied with the examiner’s decision and decided to take his case to a higher authority. For doing this, he first conducted trademark prosecution searches and prepared a report citing a similar trademark registered under the same class of goods & services. He then submitted his arguments and report to the Intellectual Property Appellate Board (IPAB). The judge reviewed the provided information and granted the proposed mark, thereby enabling the attorney to save his client’s efforts.

3. Overcome the Trademark Examiner’s Objections – After filing a mark application with the trademark office, an applicant often receives objections that requires him/her to present his/her arguments for securing a mark. In case the examiner is unconvinced by these arguments, then the applicant can appeal his/her case to the IPAB by submitting evidence from past prosecution cases supporting the arguments. In essence, conducting these searches will help you overcome the examiner’s objections in the court while also increasing the chances of getting a registered trademark.

Trademark Solutions Offered by Sagacious IP

Sagacious IP provides a variety of manual and AI-based trademark search and watch services including previous trademark prosecution searches and trademark landscapes. Besides the global mark searches, we also offer multi-country searches covering over 182 nations. Reports for both trademark searches and monitoring can be expedited and delivered within 24-48 business hours.

To avail trademark search and monitoring services, you can visit the websites: TMReady (U.S.) and TMReady (Canada). In addition to these, we also provide trademark application drafting support in the U.S.


Trademark examiners rigorously evaluate the mark applications and reject the ones that fail to meet the eligibility criteria. This can happen despite exhaustive mark searches by the applicants before filing. To counter such rejections and obtain trademarks of their choice, applicants can identify past trademark prosecutions backing their mark applications.

If you are a business that is looking to secure a trademark, it is crucial to get expert assistance. Sagacious IP’s Trademark Search serviceaims to offer clients the insights they need before filing a trademark application. Our searches enable businesses to save time and cost while filing marks by letting them sidestep any form of rejection or infringement. To know more about trademark prosecution search, watch the webinar here.

  • Gopal Singh Rawat (Trademark) and the Editorial Team

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