Prosecution of a U.S. trademark application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and costly endeavor than preparing and filing the application. It culminates when an application either matures into a registration or is abandoned.

During prosecution, a trademark application is reviewed by a USPTO Examining Attorney (“EA”). The EA issues written communications, called Office Actions, to the applicant or the applicant’s attorney. An Office Action may include, among other things: (1) citations of federal trademark registrations or applications that predate the application’s filing date, and an argument that the mark in the application is confusingly similar to one or more of the senior registrations/applications; (2) an argument that the mark in the application is merely descriptive or geographically descriptive of the goods/services listed in the application, and/or (3) an objection to the goods/services description in the application. Many trademark applications are rejected in their entirety in the first Office Action, and often on multiple grounds.