A business can complete a trademark application and submit the required forms, pay the filing fee, use the trademark properly in commerce, receive a trademark registration, and at the end of the process still have an invalid registration. The legal phrase "void ab initio" means legally invalid from the outset. This is a relatively common problem in trademark applications, particularly those that are filed without the assistance of an experienced trademark attorney. It is important to have someone that understands legal ownership, actual use, and filing requirements when filing a trademark application. The validity of the resulting registration is dependent on proper filing of the application.
The Latin term ab initio means “from the beginning.” Void ab initio therefore means legally invalid from the outset. For a trademark application, the phrase concerns whether a valid application was created on the filing date, not simply whether registration is ultimately refused. An application can satisfy the USPTO’s minimum submission requirements yet lack an essential legal qualification that must exist when filed. See 37 C.F.R. § 2.21. Receiving a filing date does not establish that those substantive requirements were satisfied. Unlike a correctable paperwork error, a defect rendering a trademark application void ab initio undermines the legal foundation of the original filing. See 37 C.F.R. § 2.71.
A trademark application claiming actual use of the trademark is filed under Trademark Act Section 1(a). This type of use-based application requires proper use of the trademark in commerce before the application filing date. Use in commerce requires the provision of the listed goods or services in commerce under 15 U.S.C. § 1127. A registration issuing from an underlying application filed under Section 1(a) is deemed void ab initio if use in commerce was not established as of the filing date. Use in commerce established after the filing date cannot retroactively satisfy the current use requirement of a trademark application filed under Section 1(a).
Every application filed under Section 1(a) is submitted with a sworn statement that the applied-for mark is in use in commerce on all of the goods and services listed in the application as of the filing date. Failure to meet this requirement cannot be cured by later use or any other curative filing after a registration is issued. However, the application may be converted into an intent-to-use based application prior to registration under proper circumstances, as discussed below.
It is important to understand that the legal effect of failing to make current use of the mark prior to the filing date concerns only the validity of a trademark application or trademark registration issuing therefrom. It does not affect any common law trademark rights that the applicant has established from making use of the mark and consumer recognition of the mark as a source identifier of the applicant's goods or services.
“Use in commerce” requires genuine trademark use in ordinary trade within commerce Congress may regulate, not merely public exposure. See 15 U.S.C. § 1127. Thus, use in commerce is defined by the extent of Congress's power to regulate commerce under the Commerce Clause of the U.S. Constitution. Commerce includes interstate trade, U.S. trade with foreign countries, and qualifying local activity affecting interstate commerce. Transactions need not involve goods physically crossing state lines: an in-state sale to an out-of-state customer can qualify without proof that the goods left the state. The nature of the activity, not simply its location, matters.
In Christian Faith Fellowship Church v. Adidas AG, an Illinois church had a trademark registration for the mark “ADD A ZERO” for use on clothing. 841 F.3d 986 (Fed. Cir. 2016). The church had sold two hats for $38.34 under the ADD A ZERO mark at its Illinois bookstore to an out-of-state customer from Wisconsin before it filed its application for the mark. The church successfully registered the mark, but it was later challenged in a cancellation proceeding before the Trademark Trial and Appeal Board. The Board cancelled the registration, finding the in-state sale as inadequate to qualify as genuine use in commerce satisfying 15 U.S.C. § 1127. The Federal Circuit reversed and remanded, holding that such transactions, considered together, substantially affect interstate commerce. No proof of goods physically crossing state lines or a specific interstate effect from that sale was required. The nature of the activity, not simply its location, was determinative.
Advertising promotes availability; it does not establish that services were actually performed. A proper service specimen, such as a website directly associating the mark with the services identified, is acceptable only when those services have actually been rendered in commerce. See 37 C.F.R. § 2.56(b)(2). In Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015), the applicant filed a use-based application for the mark PLAYDOM in 2008 using a website advertising writing and production services as a specimen. However, the applicant did not provide the applied-for services to clients until 2010. The court affirmed cancellation of the registration as void ab initio, holding that offering services without providing them did not establish use in commerce when filed. Advertising alone is not sufficient to satisfy the use in commerce requirement of Section 1(a). An inexperienced entrepreneur assuming that the promotion of their brand and trademark is sufficient to support an application under Section 1(a) may face the same result as Couture.
For goods, use in commerce requires qualifying sales or transportation in the ordinary course of trade, not token transactions merely to reserve trademark rights. See 15 U.S.C. § 1127. A proper specimen of use documents actual trademark display as customers encounter it, for example, photographs showing the mark on products, attached labels, packaging, or a point-of-sale display. An online store page can qualify when it directly associates the mark with pictured or described goods and provides ordering information. Ordinary advertising is generally insufficient, and mockups depicting intended rather than actual use are unacceptable. See 37 C.F.R. § 2.56(b)(1), (c).
Section 1(b) of the Lanham Act permits filing before actual use, but the named applicant must have a bona fide intent supported by objective evidence at the time of filing. See 15 U.S.C. § 1051(b). This is an intent-to-use application rather than an application based on current use. A bona fide intent is a firm, good faith intention to use the mark commercially. Objective evidence, such as development records or supplier discussions, must support that intent for each listed item. Merely wishing to reserve a mark is insufficient. If the applicant does not have a bona fide intent at the time of filing or cannot demonstrate a bona fide intent by actions that show efforts to offer the applied-for goods or services in commerce, the application and any registration issuing therefrom are void ab initio.
If an applicant files an intent-to-use application, the applicant must establish use through an amendment to allege use before publication approval, or a statement of use after a notice of allowance, including specimens and a verified declaration. See 37 C.F.R. §§ 2.76, 2.88. Thus, no registrations are available under Section 1 of the Trademark Act for marks that are not used in commerce. It should be noted that there are application bases under Section 44(e) or an extension of protection under Section 66(a) that do not require pre-registration use in U.S. commerce. However, those applications are based on claims for priority to foreign applications and are beyond the scope of this article.
In M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015), M.Z. Berger sought to register the mark “iWatch” for use on watches, clocks, and accessories. Swatch opposed the registration. During the opposition proceeding, M.Z. Berger presented conflicting testimony and images created only to advance the application. The court found that M.Z. Berger's evidence failed to prove a bona fide commercial intent to use the mark. The Federal Circuit upheld the opposition, holding that an asserted bona fide intent must be supported by some objective evidence that, under the totality of the relevant circumstances, demonstrates that there was real intent to use the mark in commerce at the time of filing the application. The evidentiary threshold is low, but there must be something to demonstrate the intention.
An application must identify the actual owner on the filing date. Generally, the owner is the person or legal entity, such as a corporation, LLC, or partnership, that uses the mark and controls the nature and quality of the goods or services, directly or through controlled licensees. For example, an application that names a person (e.g., the founder) rather than the company that owns the mark as the owner can be considered void ab initio. Permissible errors in the named owner, such as a misspelling or a mistaken identification of the owner as an LLC when it is actually a corporation, are correctable by amendment. Amendments replacing the original applicant with another entity to cure nonownership are not permissible. See 37 C.F.R. § 2.71(d).
It is imperative to verify the ownership before signing the applicant declaration attesting that the applicant believes it owns the applied-for mark. Attempting to correct mistakenly identified ownership by replacing the original applicant with the proper owner is not allowed.
Failure to use a mark for certain goods need not invalidate all the goods listed. In Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006), the Tribe listed unused rail, tram, bicycle, and animal transportation services. With no fraud pleaded, the Board permitted deleting those services and entered only partial summary judgment, preserving the remaining claims. Deletion did not prevent the registration of the mark in connection with the services that were in use at the time of filing. However, if the inclusion of the services that were not provided in commerce in the application at the time of the filing date was done with the knowledge that the inclusion was improper, and with intent to defraud the USPTO, the entire application may be rendered void ab initio.
Fraud requires a knowingly false, material statement intended to deceive the USPTO, not merely an innocent mistake. Materiality concerns whether the statement affects entitlement to registration or renewal. Deceptive intent may be inferred from circumstances, but falsity alone is insufficient. In In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), Bose’s renewal declaration claimed continued use of WAVE for tape recorders and players despite discontinued sales. Its general counsel believed repairing and returning previously sold products constituted use in commerce. The Federal Circuit reversed the fraud-based cancellation, rejecting the Board’s “should have known” standard as improperly equating negligence with fraud. An honest misunderstanding did not establish deceptive intent, even though the declaration was materially inaccurate. Nevertheless, the court remanded to restrict the registration by removing the unused goods.
During the application process, an applicant may request an amendment from Section 1(a) current use basis to Section 1(b) intent-to-use basis when acceptable specimens of use are unavailable or to remedy non-use at the time of filing. A verified declaration must confirm bona fide intent to use the mark in commerce for the affected goods or services both when filed and currently. The conversion cannot create intent that did not exist as of the filing date. TMEP §806.03(c).
Before publication, the examining attorney can consider the amendment and implement the conversion to a Section 1(b) intent-to-use application. After publication, procedural requirements include petitioning the Director of the USPTO for permission, submitting a proposed amendment and supporting declaration, and paying a petition fee. An approved petition reopens examination and allows the trademark examiner to consider the conversion to a Section 1(b) basis. If accepted, the application is republished as an intent-to-use application. See 37 C.F.R. § 2.35(b)(2).
If an application has been opposed by a third party during the publication period, the applicant must instead submit a motion requesting the conversion to the Trademark Trial and Appeal Board within the opposition proceeding. The motion may be filed either with the opposing parties’ consent or unilaterally without consent. See 37 C.F.R. §2.133(a). A proper conversion preserves the original filing date per 37 C.F.R. §2.35(b)(3). Conversion is unavailable either after registration or to withdraw a timely filed statement of use.
An affected party may file a notice of opposition before the Trademark Trial and Appeal Board asserting that a pending trademark application is void ab initio during the publication period for the application. The pleading must explain the threatened harm and the specific filing defect that renders the application void ab initio. See 15 U.S.C. § 1063.
After a trademark is registered, the registration may be challenged through a petition to cancel the registration as void ab initio based on non-use, incorrect identification of ownership, or a lack of bona fide intent to use the mark in commerce at the time of filing. This kind of challenge must be pursued within five years of the issuance of the registration. These bases are barred after five years and are no longer available. See 15 U.S.C. § 1064(1).
However, other grounds for cancellation may be asserted after five years. Fraud in obtaining registration can be asserted at any time, and a claim that the mark has never been used in commerce can be pursued after three years from the date of registration. See 15 U.S.C. § 1064(3), (6). Proof of fraud is unnecessary for a nonuse claim.
A contract may be void ab initio when its sole purpose is unlawful (such as contracting to commit a crime), performance is inherently impossible from inception, or a party entirely lacks the capacity to understand the transaction. Cal. Civ. Code §§ 38, 1598. A contract void ab initio is treated as never legally existing. In such cases, the contract never comes to be and no enforceable contractual rights or duties are created. The putative contract supports no demand for performance and cannot be ratified. A contract void ab initio also cannot support any third-party claims allegedly derived from it. In such cases, restitution may be sought to restore any benefits provided pursuant to the contract void ab initio to prevent unjust enrichment.
Some contracts are not automatically void, but can be rescinded if there was fraudulent inducement, duress, undue influence, or qualifying mistakes in the formation of the contract. See Cal. Civ. Code § 1689. Such contracts are said to be voidable. Voidable contracts remain effective unless challenged and rescinded by one of the parties and may be ratified (i.e., knowingly affirmed despite the defect(s) in the contract). Unlike a contract void ab initio, a voidable contract creates enforceable obligations until voided. Separately, an otherwise valid contract may contain an invalid clause that can be severed without invalidating the entire contract. See Cal. Civ. Code § 1599.
A court may declare a statute unconstitutional and deem it void ab initio when it violates the Constitution. As a result, the statute is invalid from enactment, rather than merely from the judgment date. However, that description does not automatically erase prior legal consequences. In Chicot County Drainage Dist. v. Baxter State Bank, 308 U.S. 371 (1940), the Supreme Court preserved a final debt-adjustment judgment despite the statute’s subsequent invalidation because the affected parties had an opportunity to challenge constitutionality of the statute in the original proceeding but failed to do so.
An annulment based on bigamy generally recognizes a marriage as void ab initio because one spouse was already legally married to someone still living. Statutory exceptions cover certain missing or presumed-dead spouses. Cal. Fam. Code § 2201.
Protecting your business requires more than submitting a trademark application and paying a filing fee. Before seeking to obtain registration, you need to take care to confirm the correct applicant, ownership, and filing basis. Preserve evidence supporting actual use or bona fide intent and verify every statement in the declaration. Some defects can be corrected during the application process. Others may render a trademark application void ab initio and jeopardize the resulting registration. Having an experienced trademark attorney review the filing before submission, and address problems while corrective options remain available, can help protect your investment in the mark.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
A statement of use is a filing made in a trademark application submitted with an intent-to-use filing basis under Lanham Act Section 1(b). A statement of use demonstrates that the applicant is actually using the trademark in commerce and changes the filing basis of a trademark application from an intent-to-use to an actual use application. The intent-to-use filing basis allows businesses to file a trademark application before they begin using the trademark if they have a bona fide intention to use the mark in commerce. The United States Patent and Trademark Office (USPTO) cannot issue a trademark registration from a Section 1(b) application until the applicant demonstrates use in commerce under 15 U.S.C. § 1051(d) by filing a statement of use.
A trademark statement of use (SOU) is a verified, formal legal document filed with the U.S. Patent and Trademark Office after a notice of allowance (i.e., approval of the application by the trademark examiner). The statement of use identifies the specific goods or services listed in the application for which the trademark is actually being used and creates an evidentiary record supporting that claim. The filing must identify the applicant and the mark, state the date of first use anywhere and the date of first use in commerce, include a specimen showing the mark as encountered by customers, provide a declaration attesting to the accuracy of the use allegations, and include the required filing fee. See 37 C.F.R. § 2.88.
U.S. trademark rights generally arise from real marketplace use. “Use in commerce” requires bona fide use in the ordinary course of trade, not token use merely to reserve a mark. Goods generally must bear the mark on products, packaging, or associated displays and be sold or transported in federally regulated commerce. For services, the mark must appear in sales or advertising, and services must actually be rendered in commerce. See 15 U.S.C. § 1127.
In Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015), Couture’s 2008 use-based application relied on a website advertising writing and production services, but he provided no entertainment services until 2010. The court affirmed cancellation of Couture's trademark registration because the applied-for services were not yet rendered at the time he asserted use of the service mark, and thus there was no established use in commerce at the time he asserted commercial use.
A statement of use provides sworn evidence that a brand is operational through qualifying use in commerce, and mere promotional activity does not qualify as use in commerce under 15 U.S.C. § 1127.
An intent-to-use trademark application filed under Lanham Act Section 1(b) permits the applicant to establish trademark rights before the trademark is actually used in commerce. An application filed under an intent-to-use basis requires the applicant’s good-faith bona fide intention to use the mark in commerce for each identified good or service listed in the application at the time of filing. The Lanham Act prohibits any attempt to reserve a right in a mark without a bona fide intent to use the mark in commerce. A mere hope or desire to use the mark in commerce is insufficient. A bona fide intent is judged based on concrete facts and actions, not solely upon subjective intent of the applicant. Objective evidence may include dated product-development records, market research, correspondence with manufacturers, suppliers and distributors, product prototypes, domain name registrations and website development, and branding and marketing development.
In M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015), the Federal Circuit affirmed denial of “iWatch” registration for lack of a bona fide intent at the time of filing. M.Z. Berger could not demonstrate any firm decision to commercialize the watch. Conflicting testimony about prototypes and buyer discussions further undermined M.Z. Berger's attempt to show any bona fide intention. The court found that the objective evidence did not show a firm intention to use the mark in commerce, and the trademark registration was denied.
The applicant can establish use in commerce during the trademark application process before the examiner approves the mark for publication by submitting an amendment to allege use or after a notice of allowance by submission of a statement of use. Regardless of which type of use filing is submitted, legitimate use in commerce is required in order to lawfully advance the application to a trademark registration.
Once the trademark registration issues from the intent-to-use application, constructive-use priority generally reaches back to the original filing date. Thus, a successfully submitted statement of use establishes nationwide priority over competitors who begin using conflicting marks after the filing date of the intent-to-use application, but before the applicant’s use of the applied-for goods and services in commerce. However, the applicant's rights do not supersede the rights of owners of confusingly similar marks that were in use prior to the application filing date, earlier-filed trademark applications, and earlier qualifying foreign-priority claims.
A complete statement of use filing must identify the goods or services that have been used in commerce; identify the first-use-anywhere and first-use-in-commerce dates for such goods or services; provide proof of the use in commerce by providing an acceptable specimen of use for each class of goods or services; pay the USPTO fee for submitting a statement of use; and include a signed declaration under penalty of perjury that attests to the use in commerce of the goods or services identified in the statement of use and that the applicant believes that they are the owner of the mark. See 15 U.S.C. § 1051(d). Under the USPTO rules, the sworn statement may be signed by the owner, someone with legal authority, a person with firsthand knowledge and actual or implied authority, or an authorized qualified practitioner. See 37 C.F.R. § 2.193(e)(1).
A specimen is essentially an image of an example of the applied-for goods or services being used in actual commerce. The image is submitted electronically with the statement of use through the USPTO's Trademark Electronic Application System (TEAS) filing system available through the USPTO's website. For goods, acceptable specimens include product labels, tags, packaging, and qualifying point-of-sale displays, which may be a store endcap, a sales booth, a website screenshot of an online storefront or other point of sale featuring the mark. Service specimens may include advertising or webpages directly associating the mark with services actually rendered. A specimen must clearly show actual trademark commercial use. Webpage specimens need to be submitted with the relevant URL and access date. Mockups and digitally altered specimens are unacceptable. See 37 C.F.R. § 2.56.
The SOU must be filed within six months from the date a notice of allowance issued. If additional time is needed to file a statement of use, applicant can request extension of the SOU deadline by six months. Applicants may take up to five six-month extension requests, allowing up to three years from the allowance date to begin using the mark in commerce and file a statement of use. Extension requests require a verified statement of continuing intent to use the mark in commerce and, after the first extension request, the applicant's ongoing efforts to begin using the mark in commerce. See 37 C.F.R. § 2.89.
Failure to file a statement of use or an extension of time before the SOU deadline results in abandonment of the trademark application. Revival may be available for unintentional delay under 37 C.F.R. § 2.66, but note that an SOU will not be accepted more than 36 months after allowance.
As of August 2026, the current USPTO filing fee for a statement of use is $150 per class when filed electronically and $250 per class when filed on paper. Each request for an extension of time costs $125 per class when filed electronically and $225 per class when filed on paper. Each class has a separate fee, so one-class costs exceed $100 before attorney review or additional fees.
After the filing is submitted, the USPTO reviews the declaration, use dates, specimen, and remaining goods or services. If the examining attorney finds that the statement of use fails to meet all of the requirements, they may issue an office action. For example, the examiner may find that the specimen does not properly show use of the applied-for goods or services in commerce. The applicant will then have three months (extendable to six months for a fee) to respond to the office action to correct the defect in the statement of use (e.g., by filing a proper specimen). If the statement of use is accepted, the application will proceed to a trademark registration within a few weeks.
If the applicant can demonstrate use of some, but not all of the goods or services listed in the trademark application, the applicant may delete unused goods or services, or request a division of the application under 37 C.F.R. § 2.87. If a division of the application is made, a registration will issue for the goods or services for which the statement of use was submitted in a second divisional application, and the original application will remain pending for the goods or services that were not covered by the statement of use. The divisional application is separate from the original application and has its own trademark application serial number. The applicant has to pay separate application filing fees and additional division fees for the second trademark application.
Turning a trademark application based on intent to use the applied-for trademark into a registered mark requires a proper statement of use. This is the final substantive step in the registration process. However, it must be understood that acceptance of the statement of use depends on careful of observance of the requirements. Accurate dates, an acceptable specimen, a valid declaration, and timely filing are required to move the trademark registration process to completion.
A trademark attorney can determine the appropriate filing type, review evidence of use in commerce, and address any office actions that the may USPTO issue. Assistance of trademark counsel and careful preparation helps prevent avoidable delays, submit a timely and proper statement of use, and protect the opportunity to secure a trademark registration.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Trademark prosecution is the legal process of seeking trademark registration, from trademark selection and searching, to filing and application, trademark examination, publication, and registration. For a business, company, or product team, understanding what prosecution means makes it easier to evaluate risks, anticipate challenges, and craft a filing strategy that protects the brand without wasting time or money.
This article will break the process into practical stages so readers can learn how applications are prepared, examined, registered, and maintained. Effective prosecution supports strong trademark protection by ensuring that the applicant selects a protectable mark, accurately identifies its goods or services, and responds appropriately to the application requirements of the United States Patent and Trademark Office (USPTO). Although registration can strengthen a company’s rights, help consumers recognize the source of its products or services, and support sales, it should be understood that it does not guarantee success in later enforcement disputes.
Trademark prosecution involves administrative legal proceedings for trademark registration. In the United States jurisdiction, the Lanham Act governs domestic trademark usage and registration. Foreign jurisdictions each follow its own trademark law, commonly called a Trade Marks Act. “Trademark” includes a service mark, which identifies services. Trademark prosecution differs from trademark litigation in court.
Trademark prosecution includes several steps that need to be observed to sucessfuly navigate the entire process, including trademark selection, trademark search, application submission, examination, publication, registration, and maintenance.
Strong trademarks are distinctive from pre-existing trademark usage and are ideally unique. An effective trademark may be suggestive, arbitrary, or fanciful, but should not be generic or merely descriptive of the goods or services. The USPTO reviews trademark applications for distinctiveness and compliance with formal requirements. In USPTO v. Booking.com B.V., 591 U.S. 549 (2020), the examining attorney and TTAB deemed BOOKING.COM generic for online travel-reservation services, reasoning that “booking” named the services and “.com” denoted a commercial website. On de novo district-court review, Booking.com introduced consumer-perception evidence showing that the public understood BOOKING.COM as identifying one source rather than the class of reservation services. The court found the mark descriptive, not generic, and found acquired distinctiveness for hotel-reservation services. The Supreme Court affirmed and rejected a categorical rule that adding “.com” to a generic term necessarily yields a generic mark. Instead, compound marks must be considered as a whole, and genericness turns on the term’s primary significance to consumers in the relevant trademark usage situation.
Distinctiveness depends on how consumers understand the mark as a whole, and each trademark usage situation must be evaluated based on the relevant facts. There is no black-and-white rule with respect to whether a trademark is distinctive.
Prior to initiating the trademark prosecution process, the applicant should conduct a trademark search with the assistance of an experienced trademark lawyer. A trademark lawyer should check federal and state records and common-law use. The search results should then be compared to the proposed mark, looking for similarities between the sound, appearance, and meaning of the marks; the goods and services on which the prior marks are used; and the trade channels in which the prior marks are used. The mark must not be too similar to existing trademarks, because likelihood of confusion may cause refusal under 15 U.S.C. § 1052(d). See also In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
Trademark applications must identify the correct owner, filing basis, mark, and goods or services and include the required verification and drawing. Precise descriptions of the goods or services are important because indefinite wording may trigger an objection, while the identification generally cannot be broadened after filing. See 15 U.S.C. § 1051. An applicant may file based on existing use in commerce under Section 1(a) or a bona fide intent to use the mark under Section 1(b). The applicant of an intent-to-use application must later establish qualifying use through submitting a statement of use before a trademark registration is issued.
For a use-based application, the applicant must provide dates of first use and a specimen of use for each class. Specimens must clearly show how the mark is used in commerce for the identified goods or services. A product specimen may include the goods, packaging, tags, labels, or an acceptable point-of-sale display. A service mark specimen may include advertising, website pages, or signage that creates a direct association between the mark and the services. See 37 C.F.R. §§ 2.34(a)(1), 2.56.
After filing, a USPTO examining attorney reviews the application for statutory and procedural compliance. The examiner evaluates conflicts, distinctiveness, other grounds for refusal, and formal requirements. Office actions are official letters from the trademark examiner identifying substantive “refusals” and procedural “requirements.” Minor issues may be resolved through an examiner’s amendment or direct communication, but significant refusals and objections generally require a written response.
A non-final office action allows the applicant to cure requirements or contest refusals. Trademark prosecution can include responding to office actions by revising descriptions, replacing specimens, disclaiming wording, submitting evidence, and presenting legal arguments. A complete response must address every outstanding issue. If the examiner remains unpersuaded, a final office action may issue. Depending on the issue, the applicant may request reconsideration, appeal to the Trademark Trial and Appeal Board to address substantive refusals, or petition the Director to address procedural issues. A reconsideration request does not extend the appeal or petition deadline. See 15 U.S.C. § 1070.
For most Section 1 and Section 44 applications, the office action response deadline is three months, with one paid three-month extension. Section 66(a) applications generally receive six months without extension. Failure to respond timely and completely can result in abandonment of the trademark application. A trademark attorney can protect your trademark rights by applying their skill and knowledge in the trademark process, and handle the trademark prosecution process, including preparing and submitting effective responses to USPTO office actions, communicating directly with the examiner, properly observing filing deadlines, and generally helping clients navigate the trademark registration process. Trademark attorneys use practical tools and strategies to avoid costly registration mistakes.
After approval by the examining attorney, the application enters the publication stage under 15 U.S.C. § 1062(a). Publication opens a 30-day period in which third parties who believe registration would damage them may oppose a trademark before the Trademark Trial and Appeal Board (TTAB) or request an extension. An opposition is an adversarial proceeding before the TTAB, with pleadings, discovery, evidence, and briefing. The Board decides registrability, not infringement liability, damages, or injunctions. See 15 U.S.C. § 1063.
After a final refusal, the applicant may appeal to the TTAB under 15 U.S.C. § 1070 and 37 C.F.R. §§ 2.141–2.145. Judicial review of the TTAB's decision by the U.S. Court of Appeals for the Federal Circuit is available under 15 U.S.C. § 1071. It may be critical to appeal TTAB decisions to the Federal Circuit because of the impact the Board's decision can have on the applicant's future trademark usage and potential disputes with third parties. To illustrate, in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015) the TTAB sustained B&B’s opposition to a trademark application to register SEALTITE based on likely confusion with its SEALTIGHT mark. The Supreme Court held that the TTAB's ruling could preclude relitigation of the likelihood of confusion issue in a later court case when the issue-preclusion requirements were met and the trademark usages adjudicated were materially the same. Thus, a TTAB decision could be the final word on whether a mark is confusingly similar to a prior trademark filing, and that preclusion decision may then be leveraged in trademark litigation to establish trademark infringement.
Federal registration on the Principal Register provides nationwide constructive notice of the registrant’s claim and prima facie evidence of validity, ownership, and the exclusive right to use the mark for the listed goods or services. See 15 U.S.C. § 1057(b). Registration may establish nationwide priority from filing, support federal-court remedies, and provide a basis for protection abroad. These benefits make registered trademarks easier to license, police, and value. However, a successful trademark prosecution does not guarantee success in trademark enforcement. Trademark infringement remains dependent on priority, defenses, and likelihood of confusion. It nevertheless helps secure trademark protection against similar marks and discourages confusingly similar marks.
Maintaining a trademark requires continued use and timely submissions of trademark renewals. Owners generally file an affidavit of use under Lanham Act Section 8 between the fifth and sixth anniversaries, then a renewal application including affidavits under Lanham Act Sections 8 and 9 must be filed between the ninth and tenth anniversaries and every ten years thereafter. See 15 U.S.C. §§ 1058–1059. Eligible owners may seek incontestability between the fifth and sixth years by filing a declaration of incontestability under Lanham Act Section 15. Attorneys can advise on the renewal requirements, including proper use, ownership changes, licensing controls, specimens, and renewal filings.
Trademark portfolio management includes monitoring competitors’ applications, marketplace conduct, deadlines, ownership changes, licenses, and trademark news. Watch services and audits help a business identify conflicts early and confirm that its trademark portfolios match its products, services, territories, and objectives.
Trademark rights are territorial, so portfolios should be built in the business’s relevant markets in the United States and abroad. A U.S. registration does not create rights in other countries. Every business has different markets, objectives, and situations. Counsel should prioritize countries based on sales, manufacturing, licensing, expansion plans, counterfeiting risk, and budget.
For protection across countries and the world, counsel should coordinate domestic and foreign strategies, deadlines, evidence, and ownership records. Depending on the brand, a long-term plan may combine national and international trademark filings.
Trademark prosecution involves much more than filing a few forms. It means making coordinated decisions about trademark selection, clearance, filing, responding to USPTO office actions, registration, maintenance, and enforcement. An expert lawyer can analyze the company’s objectives, break down legal and procedural challenges, craft practical strategies, and offer advice that helps secure, maintain, and enforce rights while avoiding preventable mistakes. Early guidance is especially valuable for ensuring that the application identifies the correct owner, mark, filing basis, and goods or services and that deadlines and objections are handled properly. Business owners who learn how the process works are better positioned to select a protectable mark, protect their brand, and decide whether domestic and international registration will provide benefits.
Contact our offices to connect with qualified trademark counsel to shape an effective trademark strategy before avoidable problems become costly.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
A patent application publication provides the public with access to a pending patent application to notify the public of the patent-pending status of new applications and make it aware of new innovations and technologies. It lets the public see the invention, drawings, and pending patent claims before the patent office decides whether to grant protection. Note that the publication does not establish that the invention is patentable or immediately provide enforceable patent rights.
This article is for non-attorneys and informs them of the reasons for and the effects of patent application publication. The reader will gain an understanding of what a patent application publication is and how it affects patent rights.
Most U.S. utility patent and plant patent applications are published by the USPTO 18 months after the earliest claimed filing date. A patent application is not published if it is provisional, design patent application, international design, or reissue; no longer pending; classified, under national security review, or subject to a secrecy order; issued early enough to stop publication; or covered by a valid non-publication request certifying no foreign or international filing requiring 18-month publication.
The published patent application is a patent document containing front-page data (i.e., title, inventors, publication and filing information, priority claims, classifications, and sometimes assignee information), an abstract, specification, patent claims, and drawings, generally as they were filed and sometimes reflecting timely amendments. A published application is not an issued patent and may later be granted, rejected, or abandoned. Publication establishes neither patentability nor an enforceable right to exclude, which are provided only by a granted patent. The invention is not protected against third-party use until a patent issues from the application.
U.S. patent applications generally publish 18 months after the earliest filing date for which priority is claimed. See 35 U.S.C. § 122(b)(1)–(2). A non-provisional application claiming the benefit of a provisional application normally publishes 18 months from the provisional filing date. Most applications publish before examination is completed, as patent examination may continue for years. Provisional patent applications themselves are not published or examined, but do become publicly accessible once a non-provisional application claiming priority to the provisional application is published.
An applicant may request earlier publication under 35 U.S.C. § 122(b)(1)(A). An applicant may also request non-publication of the application, which prevents the application from being published. See 35 U.S.C. § 122(b)(2)(B). This is a useful tool for maintaining the secrecy of an invention during the patent application process. With a non-publication request, the patent documents only become published if the application advances to a granted patent. Thus, the application may be maintained as a trade secret until a patent issues. However, the non-publication request can only be submitted if the applicant does not intend to seek foreign patent rights.
The USPTO publishes patent applications because Congress generally requires pregrant publication under 35 U.S.C. § 122(b). The requirement, adopted through the American Inventors Protection Act of 1999, replaced the former practice under which most U.S. applications remained confidential until a patent issued. Subject to statutory exceptions, nonprovisional utility and plant applications are published promptly after 18 months from the earliest filing date.
Publication serves several related purposes. It gives the public notice of technology for which patent protection is being applied, makes technical disclosures available earlier, facilitates prior-art searching, and allows businesses and researchers to evaluate potentially relevant pending claims before a patent issues. The USPTO identifies public notice, improved prior-art searching, and broader access to technical disclosures that promote innovation as principal policy goals of pregrant publication.
The system also brings U.S. practice closer to the 18-month publication systems used internationally. Publication balances public disclosure against the applicant’s interests by potentially allowing a reasonable royalty for certain post-publication conduct if substantially identical claims later issue and the statutory provisional-rights requirements are satisfied.
After the publication date, anyone can search USPTO databases and review the specification, drawings, abstract, and published claims. Publication informs others in the industry and publicly confirms that the application is patent pending. Patent-pending status begins when the application is filed. However, a patent publication grants no patent rights.
Claims may change during patent examination. Prior art and examiner objections often require amendments, so claims in issued patents are usually narrower or otherwise different than those in the published application. A patent application can therefore be published but never granted.
Published applications can serve as prior art against future patent applications even if they never mature into patents. Under 35 U.S.C. § 102(a)(1), a publication may be prior art beginning on its publication date and may anticipate a claim or support an obviousness rejection based on information made available to the public. A U.S. patent or published application naming another inventor also may qualify under 35 U.S.C. § 102(a)(2) as of its effective filing date, including an adequately supported priority date determined under 35 U.S.C. § 102(d), subject to statutory exceptions for certain inventor-originated disclosures, commonly owned subject matter, and joint research agreements.
The relevant inquiry is not whether the disclosed invention was ultimately patentable or whether the publication’s claims were allowed. A published patent application may be prior art for all that it discloses to a person of ordinary skill, including ideas, embodiments, drawings, examples, and technical teachings outside its claims. Conducting a thorough patentability search should therefore include searching published applications, patents granted, foreign patent databases throughout the world, and non-patent literature resources, not just U.S. patents.
A published application grants no immediate patent enforcement rights. Publication may nevertheless create potential provisional rights under 35 U.S.C. § 154(d) if a patent later issues with claims substantially identical to the published claims. Provisional rights allow applicants to seek royalties from infringers after publication. The owner may seek a reasonable royalty, but not an injunction or ordinary patent infringement damages, for qualifying acts between publication and issuance. However, the infringer must have had actual notice of the published patent application.
In Rosebud LMS Inc. v. Adobe Systems Inc., 812 F.3d 1070 (Fed. Cir. 2016), Rosebud relied on Adobe’s knowledge of a related grandparent patent, previous patent litigation proceedings involving the grandparent patent, alleged monitoring of Rosebud’s product, and the contention that Adobe’s counsel would have searched for related applications. The Federal Circuit held that this established, at most, constructive notice, and it was not shown that Adobe received notice of Rosebud's application publication. Actual notice may result from direct notification or independently acquired actual knowledge, but it cannot be imputed merely because an application is publicly searchable or the accused party should have discovered it. Because Adobe stopped using the accused technology before becoming aware of the patent application publication, Rosebud could not recover a pre-issuance reasonable royalty.
An applicant can request non-publication when filing a U.S. application. The non-publication request must accompany the application and certify that the invention has not been, and will not be, filed in another country or under an agreement requiring 18-month publication. See 35 U.S.C. § 122(b)(2)(B).
If the applicant later files a foreign or Patent Cooperation Treaty (PCT) application requiring publication, the applicant must rescind the request or notify the USPTO within 45 days. Failure to do so may cause abandonment. Applicants intending foreign protection therefore generally cannot prevent publication.
Other jurisdictions have similar patent publication rules that are required by international treaties (including the Patent Cooperation Treaty) to which nearly all foreign jurisdictions are parties. For example, the European Patent Office (EPO), the executive arm of the European Patent Organization, publishes a European patent application 18 months after filing or the earliest priority date. Earlier publication is available on request. PCT applications likewise publish 18 months from the priority date under PCT Article 21. Foreign patent publications also qualify as prior art under U.S. patent law, and thus must be searched as part of an effective patent search. European publications and patent application status can be searched and determined through the European Patent Register and Espacenet.
Patent application publication places an invention’s disclosure into the public record, alerts competitors, and may establish prior art against later patent applications. Although publication does not create an enforceable patent, it may support a later reasonable-royalty claim if a patent issues and the statutory requirements for provisional rights are satisfied. Applicants deciding whether to request or prevent publication should evaluate their foreign-filing plans, disclosure risks, likely claim changes, and competitive factors before filing. A valid nonpublication request may preserve confidentiality in appropriate cases, but it can restrict foreign-patent strategy and requires careful compliance if those plans change. Consulting a patent attorney early in the application process can help a business coordinate publication decisions with its broader patent rights, trade-secret protection, and commercialization objectives.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
How much does a trademark cost? U.S. government filing fees are $350 per class, if you apply for a single class of goods or services and utilize the pre-approved descriptions provided in the Trademark ID Manual. However, there are additional costs that may be incurred in your application, such as additional fees for more than one class of goods or services, a statement of use if you file under an intent-to-use filing basis, attorney costs if you hire a trademark attorney, trademark search fees, and maintenance costs. There are also renewal fee requirements after five years of registration and renewal applications after every 10 years post-registration.
A properly prepared one-class trademark application may require only the base application filing fee, while multiple classes, custom descriptions, intent-to-use, or an office action can increase total costs. A good estimate of the cost of a simple trademark application (a mark in current use on a single class of goods or services), including fees for attorney services, is around $2,000 to $3,500.
This article provides basic cost information for non-attorneys, allowing them to understand the process before they commit to the trademark registration process.
The United States Patent and Trademark Office (USPTO) charges a $350 base filing fee per class for electronic applications under Trademark Act Sections 1 and 44. In 2025, the trademark office replaced the previous two-tier system, TEAS Plus and TEAS Standard, with one base application fee of $350. New applications are filed through Trademark Center, the USPTO's updated electronic filing system launched in 2025. The legacy Trademark Electronic Application System is still used for filing statements of use, extensions of time, responses to office actions, and other filings. The electronic filing system is generally accessible through a MyUSPTO account that can be set up by anyone and fee payments can be set up via electronic funds transfers. The USPTO also accepts credit card payments. However, it must be understood that a MyUSPTO account may only be used to file trademark applications on behalf of the account holder. Only licensed attorneys are authorized to file trademark applications on behalf of others.
Goods and services are divided into separate international classes in related categories. A trademark application that includes one class requires a single USPTO filing fee of $350 and each additional class adds another $350 filing fee. Thus, how many classes determines the amount of USPTO fees required to submit the application for examination. One trademark application may list multiple classes, but including multiple trademark classes in one application does not reduce the USPTO filing fees. In fact, including a wide array of goods and services in a single application can overly complicate the application process.
Having a complicated single application with multiple classes of goods or services can result in a complicated examination process. Often it is simpler and more organized to file a separate application for each class. This approach cabins the different goods and services categories and avoids the entire application from being rejected based on the similarity of one of the classes with a third-party trademark filing, or the potential need to later divide the application because some of the goods or services are being used in commerce and others are not. Careful consideration of planned goods or services can prevent unnecessary complications and costs while preserving trademark protection for all the relevant goods and services.
The application form submitted to the USPTO has formal requirements that must be met before the application will be examined. Detailed information must be included in the application regarding the applicant, the legal basis for the application, the nature of the mark (including whether and when it has been used in commerce), and the specific goods and services and their respective classes. An incomplete application can trigger processing fees of an additional $100 per class. Also, if the descriptions of the goods and services are not taken from the pre-approved descriptions provided in the Trademark ID Manual, and are instead free-form custom descriptions, the applicant will pay additional fees of $200 per class. There are also size fees for goods and services descriptions. Each additional 1,000 characters beyond the first 1,000 characters adds $200 for the affected class. These additional fees are in place to promote examination efficiency. It is highly advisable to use the pre-approved descriptions in the Trademark ID Manual whenever possible. However, the use of an inaccurate description of goods or services merely to avoid additional USPTO fees is never advisable.
A comprehensive trademark search should be performed prior to filing a federal trademark application. The USPTO provides a search tool for its internal trademark database, but it does not provide guidance to the applicant as to registrability of the applicant's trademark. A professional search may cost between about $300 and $1000. However, the more important service is the analysis of the search results and the guidance provided by an experienced attorney with regard to the likelihood that the mark can be registered and potential trademark infringement and dispute issues that may arise from the use of the proposed trademark. An effective trademark search and analysis includes related prior trademark filings in the federal trademark registers, state trademark registrations, active business names, internet domains, and unregistered, common-law use. DIY filing or self-filing can avoid attorney fees but create costly mistakes arising from filing trademarks that have little chance of success, misidentifying the ownership of the mark, misclassifying goods and services, submitting improper specimens, and various other matters. Applications filed by attorneys have a far higher success rate than DIY filings.
A trademark attorney does increase the cost of the application, but greatly increases the chances of success in a trademark application and can keep the applicant out of potential trademark infringement situations. Trademark attorneys handle billing for such services in different ways. Some may charge a flat-fee, hourly attorney fees, or separate fees for attorney services such as an initial consultation, search, preparation, and monitoring. Trying to save a few hundred dollars by pursuing a trademark application without experienced trademark counsel often leads to failure and can result in weakened brand protection. In fact, the USPTO recommends hiring a trademark attorney to conduct a clearance search and prepare the application, respond to correspondence, and help maintain trademark rights.
The trademark application process requires a valid filing basis. Under Section 1(a), the mark must be used in commerce at the time the application is filed. Under Section 1(b), the applicant must have a bona fide intent to use the mark in commerce. Intent-to-use applications incur later additional trademark costs, including a statement of use in which the applicant declares under penalty of perjury that the mark has been used in commerce in connection with the applied-for goods or services. The applicant must also provide a valid specimen of use for each class to which the statement of use relates. There are USPTO fees associated with each class for which the statement of use is filed: $150 per class. These filing options allow a business owner to file for trademark registration regardless of their current stage of trademark implementation.
The applicant can file an amendment to allege use during the examination process for the intent-to-use application. If no amendment to allege use is filed, there is a six-month period after a notice of allowance for the application is issued by the USPTO. If the applicant cannot establish use of the mark and submit a statement of use in that timeframe, the applicant can extend the time to file the statement of use another six months by filing an extension request and paying a fee of $125 per class. The applicant can extend the time to file the statement of use up to five times.
During the examination process, a USPTO examining attorney reviews the trademark filing for legal and procedural issues. An office action may be issued if the examiner finds likelihood of confusion issues with prior trademark filings under Section 2(d), descriptiveness issues under Section 2(e), or formal issues with the application, such as faulty classifications or descriptions of the goods and services. There is ordinarily no government fee required to file a response to the office action, but it is advisable to seek the assistance of a trademark attorney to analyze and respond to the issues in the office action. This legal work, of course, incurs attorney fees. For an office action that raises formal matters and/or descriptiveness issues, an attorney may bill a few hundred dollars. If the office action raises complicated refusals based on alleged confusion with prior-filed applications, responding to the office action can cost, e.g., $1,500 to $3,500.
The USPTO provides a three-month response window for an office action. The time to respond can be extended for a three-month period for a $125 electronic fee. If the applicant fails to timely respond to an office action and the applicant did not intend to abandon the application, the application can be revived. The petition to revive an unintentionally abandoned application carries a USPTO fee of $250. These additional costs involved in extending the timeline of examination are intended to promote efficient prosecution of trademark applications. It is recommended that applicants seek the assistance of trademark counsel in order to avoid costly mistakes in the application process.
Trademark rights can arise through use, but federal trademark registration offers important benefits. A Principal Register certificate is prima facie evidence of validity, ownership, and exclusive rights for the listed goods or services, and registration supplies nationwide constructive notice. See 15 U.S.C. § 1057(b).
The Supreme Court detailed registration’s legal benefits in Matal v. Tam, 582 U.S. 218 (2017). Although unregistered marks may receive protection, Tam explained that Principal Register registration provides nationwide constructive notice, prima facie evidence of validity, ownership, and exclusive use, potential incontestability after five years, and assistance against infringing imports. In B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), B&B opposed Hargis’s SEALTITE application based on its registered SEALTIGHT mark. After the TTAB found a likelihood of confusion, the Court held that the determination could preclude relitigation in later infringement litigation when ordinary preclusion requirements are met and the usages adjudicated are materially the same. B&B Hardware thus shows that the USPTO provides not merely a registration process, but also an administrative court whose findings regarding trademark registrations may have a determinative effect on trademark enforcement. These statutory, evidentiary, and procedural advantages can make trademark registration central to comprehensive protection.
After the registration process, there are still actions that must be periodically taken to preserve the registration and the registrant's trademark rights. There are trademark renewal and maintenance requirements at 5 years and every 10 years after the registration is issued. A Section 8 declaration of continued use of the registered mark is due between the fifth and sixth anniversaries. The Section 8 affidavit of use carries a USPTO fee of $325 per class. The registrant may also file a declaration of incontestability under Section 15, which removes many of the bases for challenging the validity of a registration, including prior trademark use. The USPTO fee for the Section 15 filing is $250 per class. At the tenth anniversary, and every ten years thereafter, the Section 8 affidavit of use and Section 9 renewal application must be filed at a renewal fee of $650 per class. These additional trademark fees should be considered when estimating the cost of the entire process.
A six-month grace period is available for these trademark renewal filings, but USPTO surcharges of $100 per class are required.
Protection in multiple countries can be sought through an international treaty system called the Madrid System. An owner of a U.S. trademark registration may seek foreign registrations that claim priority to the U.S. application through the World Intellectual Property Organization (WIPO). If an international trademark registration application through the Madrid System is filed within six months from the filing date of the U.S. application, the international trademark registration application will have the same effective filing date as the U.S. application. The application is filed with WIPO, which charges a basic fee in Swiss francs plus country and class-based charges. Government fees vary by the countries selected and whether one or multiple basic applications or registrations are used. The filing fees for an application through the Madrid System vary based on the selected countries in the range of about $1,000 to about $3,000.
So, how much does a trademark cost? The total costs may include a comprehensive trademark search, filing fees, attorney fees, intent-to-use filings, custom descriptions, responses to an office action, maintenance filings, and international protection. Almost all trademark fees are nonrefundable, and the USPTO generally will not refund fees merely because registration is refused or an application is abandoned. The most reliable cost estimate therefore begins with careful consideration of the mark, owner, goods or services, number of classes, countries, and filing basis. A targeted trademark search and informed filing strategy can control trademark costs, strengthen federal registration, secure meaningful brand protection, and help avoid costly mistakes throughout the application and registration process.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Inequitable conduct is an equitable defense that can render an issued patent unenforceable when a person involved in its prosecution intentionally deceives the U.S. Patent and Trademark Office (USPTO) by withholding or misrepresenting material information. The doctrine protects the integrity of patent examination while preventing accused infringers from converting ordinary mistakes into allegations of fraud. Modern law therefore requires demanding proof of both materiality and specific intent to deceive in order to find inequitable conduct.
This article is directed to non-attorneys and explains how inequitable conduct developed, what the duty of disclosure requires, how courts evaluate an inequitable conduct claim, and why a finding can affect the enforceability of the entire patent, related patents, infringement remedies, and, in some circumstances, antitrust liability.
Inequitable conduct is judge-made law rooted in the common law doctrine of unclean hands and is an unenforceability defense under 35 U.S.C. § 282(b)(1). Inequitable conduct occurs when an applicant breaches duty of candor to the United States Patent and Trademark Office (USPTO). It can arise when a patent applicant, inventor, or patent attorney deliberately withholds material prior art, makes a material misrepresentation, or submits false information to an examiner.
A violation of the duty of disclosure does not automatically prove that inequitable conduct occurred. The accused infringer must establish two elements: materiality and specific intent to deceive. Negligence, poor judgment, and even gross negligence are not enough.
Its antecedents reach back to the Patent Act of 1790, which authorized a district court to repeal a patent obtained “surreptitiously” or through “false suggestion.” The modern inequitable conduct defense developed from Supreme Court decisions involving fraud and suppressed evidence. The following cases illustrate the nature of inequitable conduct.
In Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933), the patent owner learned that Bernard Clutter’s earlier use of a ditching-machine feature threatened a patent’s validity. A company official obtained Clutter’s affidavit calling the use an abandoned experiment, plus promises to assign any rights, keep the prior use secret, and suppress the evidence. The company then obtained a favorable infringement decree and relied on it when seeking injunctions on related patents. Defendants exposed the arrangement through further examination of Clutter. The Court held that the corrupt bargain directly related to the requested relief and approved dismissal as to all related patents. The agreement, affidavit, testimony, and use of the tainted decree proved deliberate concealment.
In Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), Hartford’s attorneys wrote an article praising its “gob feeding” invention, arranged publication under a labor leader’s name so it appeared independent, submitted it during patent prosecution, and later emphasized it on appeal. The appellate court quoted the article in finding the patent valid and infringed. Years later, correspondence, expense records, testimony, and payments to the nominal author exposed the scheme. The Supreme Court found fraud on both the Patent Office and the courts and ordered the prior judgment vacated.
In Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806 (1945), Automotive obtained a sworn statement indicating that a rival’s torque-wrench application and interference testimony used false invention dates and false inventorship. Instead of disclosing the suspected perjury, Automotive settled the interference, acquired the application, expanded its claims, and obtained a patent. Attorney memoranda, investigative reports, the sworn statement, and settlement documents proved its knowledge and suppression. The Court reinstated dismissal under unclean hands, emphasizing the duty to report possible fraud in Patent Office proceedings.
Under 37 C.F.R. § 1.56, each person substantively involved in filing or prosecuting a patent application, including inventors and individuals acting for the applicant, such as prosecuting patent attorneys or agents, owes the USPTO a duty of candor and good faith, including a duty to disclose known information material to patentability. Information material to patentability of any pending claim includes noncumulative prior art or other information that would establish a prima facie case of unpatentability or contradict a position taken before the patent examiner. The duty continues until the claim is cancelled or withdrawn, or the application is abandoned.
Because a patent is affected with a public interest, the rule seeks to give the examiner the evidence needed to evaluate the claimed invention. “Public interest” refers to the public’s stake in accurate patent examination because a patent grants a right to exclude others from practicing the claimed invention. Full disclosure helps prevent unwarranted exclusive rights while protecting qualifying inventions. It should be understood that a breach of the disclosure requirements becomes inequitable conduct only when the breach is done with intent to deceive and the breach is material to patentability of the claimed invention.
A modern major patent case, Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) established a but-for analysis test for cases of inequitable conduct. In the Therasense, case, the patent at issue claimed blood-glucose strips that tested whole blood without a protective membrane. The examiner viewed the same inventor's earlier patent as prior art disclosing that feature. The patentee responded that skilled artisans would understand the earlier patent to require a membrane for whole blood, supporting the argument with a research director’s declaration. However, the patentee did not disclose briefs submitted to the European Patent Office addressing the earlier patent, where the patentee had characterized the same membrane language as optional. The district court found the omission material and held the later patent unenforceable.
The Federal Circuit vacated and remanded. Its en banc opinion established the current, stricter but-for standard for proving inequitable conduct. Under the but-for test, information is material only when the USPTO would not have allowed a claim had it known the withheld or misrepresented information. The district court makes that hypothetical patentability determination under USPTO standards. A narrow exception presumes materiality for affirmative egregious misconduct, such as filing an unmistakably false affidavit.
Proving inequitable conduct requires the party asserting inequitable conduct to show by clear and convincing evidence that a specific person knew of the information, knew it was material, and made a deliberate decision to withhold or misrepresent it.
Intent cannot merely be inferred from materiality. It may be shown through circumstantial evidence, but deceptive intent must be the single most reasonable inference. A credible explanation consistent with good faith may defeat that inference. “Should have known” reasoning and gross negligence do not establish the required specific intent.
Because an inequitable conduct claim sounds in fraud, Federal Rule of Civil Procedure 9(b) applies. In Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), SAAT sought to add an inequitable conduct defense alleging that Exergen withheld two patents and website statements inconsistent with prosecution arguments. The district court, as trial court, denied leave, and the Federal Circuit affirmed. SAAT named only “Exergen, its agents and/or attorneys,” omitting the responsible person, affected claims, location of material teachings, why the references were noncumulative, and facts supporting knowledge and deceptive intent. Exergen requires the “who, what, when, where, and how,” plus facts supporting scienter. At trial, defendants must prove both elements by clear and convincing evidence. A judge makes the inequitable conduct determination; summary judgment is proper when proof is insufficient, and appeals go to the U.S. Court of Appeals for the Federal Circuit.
It is often said that inequitable conduct “invalidates all claims,” but that is technically imprecise. If the court concludes inequitable conduct occurred, the entire issued patent is rendered unenforceable: all the claims, not just the particular claims connected to the misconduct. A pending patent application has no enforceable patent claims, so inequitable conduct does not “invalidate” an application.
The taint can sometimes affect related patents or applications when they share an immediate and necessary relationship with the misconduct. The patent owner may also face an attorney-fee award under 35 U.S.C. § 285 in exceptional cases. Whether a case is "exceptional" and attorney fee awards are warranted is determined under discretion of the court.
A finding of inequitable conduct can eliminate infringement remedies. Intentional fraud in obtaining and enforcing a patent may also strip the patent holder’s antitrust exemption. Under 35 U.S.C. § 154(a)(1), a patent gives its owner the right to exclude others from making, using, offering to sell, selling, or importing the claimed invention during the patent term. Because Congress expressly created that right, a patent owner generally does not violate antitrust law merely by:
35 U.S.C. § 271(d) similarly provides that enforcing a patent or refusing to license it does not, standing alone, constitute patent misuse or an illegal extension of the patent right. In Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 174–78 (1965), the Supreme Court held that if inequitable conduct is found, antitrust violations may be found if the other elements of monopolization are proven.
In Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), Food Machinery sued Walker on a sewage-treatment-diffuser patent. Walker alleged Food Machinery falsely swore it knew of no public use more than one year before filing, despite having participated in such public use. Lower courts dismissed the antitrust counterclaim. The Supreme Court reversed, holding that intentional fraud in obtaining and enforcing a patent may strip the patentee’s antitrust exemption. This permits Sherman Act § 2 liability and Clayton Act § 4 treble damages, but the claimant must prove the other elements of monopolization, including a relevant market, monopoly power, and anticompetitive injury. Ordinary inequitable conduct does not automatically establish antitrust liability.
These three Federal Circuit decisions discussed below illustrate the evolution of inequitable conduct law from a comparatively broad doctrine to the narrower, more disciplined framework applied today. THe McKesson case shows how courts evaluated nondisclosure and inferred intent under the pre-Therasense standards. Exergen addresses the threshold question of what a defendant must specifically allege before an inequitable conduct claim may proceed. Therasense then redefined the substantive proof required to prevail by separating materiality from intent and imposing stricter standards for each. Considered together, the cases explain both how inequitable conduct allegations must be pleaded and how they must ultimately be proven.
In McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007), one patent attorney prosecuted related applications before different examiners but did not disclose a prior-art patent cited in a related application, rejections of similar claims, or the allowance of overlapping claims. The Federal Circuit affirmed inequitable conduct because the omissions were material under the then-prevailing “reasonable examiner” test and the pattern of nondisclosure, coupled with no credible explanation, supported deceptive intent. McKesson therefore illustrates the broader pre-Therasense approach.
In Exergen Corp. v. Wal-Mart Stores, Inc., SAAT sought leave to add an inequitable conduct defense. The court affirmed denial because general accusations against a company and its attorneys were insufficient. The pleading failed to identify the responsible individual, affected claims, location of withheld information, or why it was material and noncumulative. Although knowledge and intent may be alleged generally, facts must support a reasonable inference that an identified person knew the information and deliberately withheld or misrepresented it. Pleading on information and belief also requires identification of its factual basis. Exergen therefore created a procedural gatekeeping rule.
A divided Federal Circuit panel initially affirmed unenforceability. The court then granted rehearing en banc, vacated the inequitable conduct judgment, and remanded under a new standard. The en banc court rejected the sliding-scale approach: strong materiality cannot compensate for weak intent. The accused infringer must prove materiality and specific intent independently by clear and convincing evidence; materiality ordinarily turns on the but-for test. Affirmative egregious misconduct creates a narrow exception to but-for materiality, but not to the intent requirement. Even after both elements are proven, the district court must weigh the equities. Together, Exergen governs pleading and Therasense governs proof.
Businesses seeking patent rights should be forthcoming with information relevant to their inventions during patent prosecution. A patent applicant must disclose known material information to the patent office, and should consult a patent attorney about their obligations during patent examination, such as the disclosure of potentially harmful prior art. Failure to do so could result in a loss of enforceable patent rights during patent litigation.
At the same time, defendants need strong evidence to prove inequitable conduct. The required showing generally includes materiality of the omitted information and a deliberate, specific intent to deceive, each established independently by clear and convincing evidence. But if proven, inequitable conduct does not merely eliminate one claim; it renders the entire patent unenforceable, and may affect related patents in appropriate circumstances. If the concealment or misrepresentation is egregious, the alleged infringing party may be awarded their attorney's fees. Careful disclosure practices and documented good-faith decisions provide the best protection against such an outcome.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
The expiration of the Steamboat Willie copyright became a popular issue when the 1928 cartoon entered the U.S. public domain on January 1, 2024. The lapse permits free use of the film’s original creative expression, but it did not release every version of Mickey Mouse. The Walt Disney Company still owns copyrights in many later iterations and retains extensive trademark rights related to the Mickey Mouse character. The subtleties of what versions and aspects of the Mickey Mouse character can be used without Disney's authorization are highly important to artists, filmmakers, businesses, and other creators planning new works that utilize the Steamboat Willie content.
We here explain what aspects of Steamboat Willie are in the public domain and what artists and authors can use in their own creative works.
Released in 1928, Steamboat Willie gave Mickey Mouse and Minnie Mouse their first widely distributed public appearance. Although the silent Plane Crazy was produced earlier, Steamboat Willie introduced audiences to Mickey through animation coordinated with synchronized sound. The film also featured Pete, historically called Peg Leg Pete. Its success marked a turning point for Walt Disney’s studio and established Walt Disney as a major force in animation. The value of the Steamboat Willie copyrights lay in both exclusive control and the film’s role in creating a durable character, brand, and intellectual property licensing platform.
Copyright law protects original creative works fixed in a tangible medium, including motion pictures, music, drawings, and other artistic works. Here, protection covered the film’s animation, visual designs, sequence, music, sound, and the creative expression embodied in the first versions of Mickey and Minnie. Disney’s copyright included rights to reproduce, distribute, perform, display, and prepare derivative works. Copyright does not protect the general idea of a cartoon mouse, but it can protect how the character is drawn and portrayed. See 17 U.S.C. §§ 102(a)–(b), 106.
The Steamboat Willie copyright was secured in 1928 under the Copyright Act of 1909. Works of that era generally needed publication with a copyright notice and timely renewal to receive the full copyright term. Those formalities differ from modern law, under which copyright protection generally begins when a work is created and fixed. Control over copying and unauthorized uses allowed Disney to develop the Mickey Mouse character without competitors duplicating their copyrighted work.
Congress lengthened copyright terms through the Copyright Act of 1976 and the Sonny Bono Copyright Term Extension Act of 1998. The latter, often mockingly referred to as the “Mickey Mouse Protection Act,” added 20 years and gave qualifying pre-1978 works a 95-year term. Under the pre-1978 renewal system, qualifying works had a 28-year initial term and 28-year renewal. The 1976 Act extended total protection to 75 years; the 1998 Act enlarged the renewal to 67 years, yielding 95 years total. Section 304(b) accordingly states that a copyright still in its renewal term when the 1998 Act took effect lasts 95 years from the date originally secured.
Disney supported the legislation along with a broader coalition. In Eldred v. Ashcroft, 537 U.S. 186 (2003), publishers relying on public-domain works challenged the Sonny Bono Copyright Term Extension Act, arguing that extending existing copyrights violated the Copyright Clause’s “limited Times” language and the First Amendment. The Supreme Court rejected both challenges. It held that a definite term remains “limited” after extension, relied on Congress’s historical practice, and ruled that no heightened First Amendment scrutiny was required because the idea-expression distinction and fair use safeguard speech.
The film remained protected through December 31, 2023. Because its copyright was secured in 1928, the applicable term ended at the close of 2023 after 95 years of protection under 17 U.S.C. §§ 304 and 305. Section 304 defines the copyright term length (95 years in this case) and Section 305 requires copyright terms to continue through December 31 of the year in which they would otherwise expire. The Steamboat Willie copyrights therefore expired automatically at midnight, and the film entered the U.S. public domain on January 1, 2024. No renewal, payment, or filing by Disney could extend the statutory maximum.
The 1928 film may now be copied, screened, restored, distributed through an archive, adapted, and remixed in the U.S. without the original creator’s permission or a copyright license. Creators may incorporate its public-domain expression into new works, while receiving copyright protection only for original material they add. Public-domain status does not erase authorship; it ends the former owner’s exclusive copyright rights in the work. This transition is a dramatic example of copyright’s intended balance between the creator's rights and public access: creators receive a substantial period of control, after which the public may preserve, study, and reinterpret the work.
The 2024 expiration placed only the expression in Steamboat Willie and other qualifying 1928 works, not the entire evolving Mickey Mouse character, into the public domain. The original version of Mickey is black-and-white, lacks gloves, has a long, thin tail, and looks rougher than the modern mouse. His signature gloves appeared in 1929, and his appearance changed significantly in later cartoons and movies.
There is an important current qualification. Qualifying 1929 Mickey works entered the U.S. public domain in 2025, and 1930 works followed in 2026. However, copyright infringement is analyzed on a work-by-work and version-by-version basis: the 2024 event freed the 1928 version of Mickey, while newer versions and later creative additions did not become free merely because Steamboat Willie did. Many familiar modern versions remain protected. An unauthorized use of a Mickey mouse -like character will be analyzed against both the public domain versions of mickey mouse and protected versions of Mickey, regardless of the author's intent. Thus, authors should be very careful about any derivative works based on Steamboat Willie.
Artists may reproduce the film and create derivative works based on its public-domain expression. A creator can make a new cartoon, book, game, play, artwork, or horror film using the original versions of Mickey and Minnie Mouse. Creative adaptations of the original Steamboat Willie were in development immediately after the copyrights expired. Projects in several genres were announced almost immediately, much as the public-domain arrival of Winnie the Pooh prompted unconventional adaptations. Public domain therefore encourages new creativity and reinterpretation of cultural works.
Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014), reached a similar result in copyright litigation regarding Sir Arthur Conan Doyle's Sherlock Holmes character: once a story enters the public domain, its protected elements become fair game, but original additions from later copyrighted works remain protected. A new adaptation should rely on public-domain material or independently created expression, not copy Disney’s still-protected later versions.
Copyright and trademark protect different interests. Copyright protects creative expression for a limited time. Trademark law identifies the commercial source of goods and services and prevents consumer confusion about origin, sponsorship, or approval.
Disney retains trademarks for Mickey Mouse despite the copyright expiration. Trademark rights can last indefinitely while used in commerce and properly maintained through required trademark renewal filings. See 15 U.S.C. § 1059.
Disney’s trademark rights can limit use of Mickey Mouse as a brand, logo, or source identifier on merchandise consumers may believe comes from Disney. Branding that leaves consumers confused about whether Disney licensed, sponsored, or endorsed a product may be prohibited. Trademark law cannot, however, restore an expired copyright or bar copying public-domain expression because consumers associate it with the former copyright owner.
In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), Dastar copied and edited a public-domain television series, sold videos under its own name, and did not credit Fox. Fox alleged reverse passing off under § 43(a) of the Lanham Act, arguing Dastar falsely claimed to be the videos’ origin. The Supreme Court rejected the claim. It held that “origin of goods” means the producer of the tangible goods sold, not the author of ideas or creative content embodied in them. Because Dastar produced the physical videos, the Lanham Act did not require attribution. The Dastar holding prevents 15 U.S.C. § 1025(a)(1)(A) from becoming a perpetual right of attribution in the authorship of communicative content. It does not establish that public-domain imagery can never function as a trademark or that source-identifying use of such imagery is immune from infringement, false-association, or dilution claims.
That distinction is particularly important here. A creator may copy public-domain expression as expression, but using that same material prominently as a brand or product-source designation can implicate trademark law. Jack Daniel’s expressly distinguishes expressive use from use “as a mark.” A contrary interpretation, the Court warned, would create a “mutant copyright” of perpetual duration. Dastar therefore preserves claims based on misleading source, sponsorship, or affiliation while preventing trademark law from removing public-domain material from lawful use.
Free use does not mean risk-free use. Copying protected features from later versions of Mickey may create copyright infringement exposure, while using Mickey as the creator’s own trademark may create a likelihood of consumer confusion.
In Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), VIP Products sold a “Bad Spaniels” dog toy that mimicked Jack Daniel’s bottle and label trade dress while adding parody. The Ninth Circuit applied the Rogers First Amendment test established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and treated the use as non-actionable parody. The Supreme Court vacated that decision. It held that Rogers does not apply when an expressive design serves as a source identifier for the defendant’s goods. Parody remains relevant because obvious mockery may reduce perceived affiliation. Rather, ordinary trademark analysis governs whether consumers are likely to be confused.
The boundary between copyright and trademark use is already producing legal challenges. In 2025, Disney sued over a “Mickey 1928 Collection” of jewelry, alleging that the seller used Mickey as a trademark and suggested an affiliation with Disney. Disney Enterprises, Inc. v. Red Earth Group Limited d/b/a Satéur, No. 2:25-cv-06469 (C.D. Cal.). Disney alleged that Satéur’s “Mickey 1928 Collection” used Mickey imagery, names, packaging, and branding to suggest affiliation with Disney. The case ended in a stipulated final judgment and permanent injunction. The allegations show why creators should identify their own company as the source and state clearly that a new creation is not produced, sponsored, licensed, or approved by Disney, avoid Disney-style branding, and be very cautious about using public domain images and content in the context of merchandise.
The lapse of the Steamboat Willie copyrights illustrates the balance at the center of intellectual property law that applies even in the case of hugely successful and popular creative works. Copyright protected Disney’s valuable film and character expression for the limited 95-year term. Public-domain status now allows creators to build on the 1928 work without Disney's permission. However, later versions of Mickey Mouse and other works remain subject to their own copyright terms, and Disney’s trademark rights still protect its characters and branding from consumer confusion. Creators may use what is in the public domain, but they should respect protected later expression and avoid presenting new works as being associated with the Walt Disney company.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
A federal trademark search is a search of the database of prior trademark filings provided by the United States Patent and Trademark Office (USPTO). The search may involve searching for combined search terms, including keywords, specified goods and services, and classes of goods and services, to find prior related trademark filings that are similar to a proposed trademark or service mark. The search determines whether a desired trademark may conflict with a prior registration or trademark application for an existing brand before a business invests in packaging, advertising, or a trademark application. It can indicate whether a proposed trademark can be registered, identify potential infringement risks, and prevent expensive future rebranding.
This article provides an explanation of federal trademark searches and related topics for entrepreneurs and business owners. It aims to provide a greater understanding of the purpose and importance of conducting trademark searches before a committing to a mark.
A federal trademark search examines records maintained by the United States Patent and Trademark Office (USPTO), the federal trademark office responsible for administering federal trademark registrations. Although the USPTO handles both patent and trademark matters, each uses a separate system and database.
The USPTO database includes registered marks, pending applications, abandoned applications, and canceled or expired registrations. Each record may provide the mark’s wording or design, owner, serial number, filing date, registration status, identified goods or services, international trademark classes, and prosecution documents. Reviewing this information helps a searcher identify direct name matches as well as related marks that are similar in appearance, sound, meaning, or overall commercial impression.
A useful search therefore goes beyond entering the exact wording of a proposed mark. It may include spelling variations, phonetic equivalents, shortened forms, synonyms, dominant words, design elements, and related goods or services. The search results can reveal potential conflicts arising from earlier federal trademark applications or registrations and help determine whether further investigation is needed before a business adopts the mark or files its own application.
Section 2(d) of the Lanham Act permits refusal of a trademark application when a mark is likely to cause confusion with a prior mark. See 15 U.S.C. § 1052(d). Confusing use may also support trademark infringement claims under 15 U.S.C. §§ 1114(1) and 1125(a), potentially exposing a business to an injunction, monetary damages, attorneys’ fees in exceptional cases, and the loss of investments made in developing the brand.
A trademark search helps avoid lawsuits by evaluating whether customers may believe related goods or services come from the same owner, are affiliated, or have approved or sponsored one another. Identifying a potential conflict before launch gives a business the opportunity to select a different mark, narrow its services, modify its branding strategy, or seek consent from the prior owner. This can protect advertising expenditures, domain names, packaging, customer goodwill, and other investments that may otherwise be lost through forced rebranding.
A search cannot guarantee that no likelihood of confusion issues exists, but a careful search can save time and money and support a more informed decision. Businesses should document every query, date, result, and conclusion for future reference.
Use the official USPTO site and verify the “dot gov” address before entering any search information. The free trademark search tool provides direct access to the USPTO database. Begin with a basic search for the exact text of the desired trademark name. This “knock-out” search can quickly identify exact matches and obvious conflicts that may make further review necessary.
For each relevant record, open the complete entry rather than relying only on the summary displayed in the search results. Save a link or screenshot showing the search terms and date, and use the listed serial number to review the mark’s current status and documents in the Trademark Status and Document Retrieval system. Examine whether the record remains active and note any limitations in the identified goods or services. Real-time search results come directly from the USPTO search system, although newly filed documents may not appear immediately.
A complete trademark search must explore phonetic equivalents, alternate pronunciations, similar spellings, singular and plural forms, spacing changes, abbreviations, translations, and similar names. Search strong words separately and together, including any slogan, because minor differences may still create the same overall impression.
Likelihood of confusion is evaluated under the nonexclusive DuPont factors. Key considerations include the similarity of the marks in appearance, sound, meaning, or commercial impression; the relatedness of the goods or services; and whether they travel through overlapping channels of trade to the same customers. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Other factors may include the strength or fame of the prior mark, the number and nature of similar marks in use, purchaser sophistication, purchasing conditions, actual confusion, concurrent use without confusion, and agreements or other market interaction between the owners.
The factors are weighed according to the evidence. Not every factor applies in every situation, and one factor may be decisive. Similar trademarks therefore must be assessed as a whole rather than dissected into isolated components. In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018).
Similar marks may coexist for unrelated products, so a conflict may not prevent trademark registration. Conversely, different classes do not eliminate risk because international class numbers are primarily administrative and do not determine whether goods or services are commercially related. Advanced tools can reveal similar names across different classes, but the searcher must compare the nature, purpose, users, and customary sources of the goods or services, along with the relevant customers and channels of commerce.
The identification of goods and services should be reviewed in each application or registration for similar marks. If an identification contains no restrictions on customers or trade channels, the USPTO may presume that the goods or services reach all ordinary purchasers through all normal channels for those offerings. The USPTO will treat such trademark registrations as broadly reaching all relevant consumers for the listed goods and services.
Treat trademarks not just as names but also as logos and design elements. The USPTO assigns six-digit design search codes to nonword features such as animals, shapes, plants, or a U.S. flag. The first pair of digits identifies a broad category, the second a narrower division, and the third a specific section.
To identify the proper codes, first list the prominent or significant features that would help a viewer recognize the logo or locate a similar design. Use the Trademark Design Search Code Manual’s alphabetical index to find a likely category, then review its divisions, sections, explanatory notes, cross-references, exclusions, and sample images. Do not rely solely on the ordinary name of an object.
Complex logos may require multiple codes for separately recognizable elements. Search each applicable six-digit code and broaden overly narrow results by searching at the division level without the final section digits with truncation syntax (e.g., DC:0301*). Also search the USPTO’s text descriptions and examine the codes assigned to visually similar marks for additional possibilities. Thoughtful code selection is essential. A word and a design can create similar commercial impressions even when they are not identical.
Conducting a federal trademark search helps check existing federal registrations, but it is not a comprehensive trademark search. Additional searches should be performed of state registries, business-name databases, websites, domain names, social media, marketplaces, app stores, trade directories, and industry publications.
A common law trademark may arise from use in commerce without federal registration. Common law trademark rights are limited to the geographic region in which the trademark is recognized by consumers. However, a senior common law trademark holder has superior rights to a later trademark registrant in that geographic region. A senior common law trademark holder may also challenge the registration of a confusingly similar mark filed by a junior user. Thus, common law marks require separate search efforts and can limit a later registrant’s ability to use or register a mark. See 15 U.S.C. § 1125(a).
A free trademark search or trademark engine can check basic brand availability, returning a list of similar marks in the USPTO database. Free searches provide useful exact-match answers and direct name matches. Advanced tools offer broader insights into similar marks and classes. Search tools, however, do not substitute for professional legal advice.
A professional comprehensive search can investigate federal and state records, common law use, ownership, related companies, and live, dead, pending, registered, or approved-for-publication records. Applicants should consider contacting a trademark attorney to perform the search, interpret matches, and assess registration and infringement risks.
The cost of a professional trademark clearance search varies significantly. There are online services that offer low-cost federal trademark searches (e.g., for $50~$200). However, these searches are generally just a search report identifying similar marks in the USPTO records without common law or state trademark searches, and without significant analysis or guidance. It is highly recommended that you seek the assistance of an attorney experienced in trademark law to conduct the search and analyze the results. An experienced trademark attorney can conduct a comprehensive search that does not miss potential sources of conflict with registered or unregistered marks, and can provide detailed guidance on the risks presented by your chosen trademark or service mark.
After the search results have been reviewed, you must decide whether to proceed, select another desired mark, or explore small alterations that may improve the chances of registration. A conflict does not always bar registration, but superficial changes may not resolve confusion.
If no material conflicts exist, file a USPTO trademark application through the online form at the USPTO's online Trademark Center. The applicant must identify the owner and filing basis, describe the mark, select the goods or services, submit the application, and monitor its status. Multiple classes require a fee for each class.
A federal trademark search is an essential part of selecting and protecting a brand, but it should not end with a search for exact matches in the USPTO database. Effective clearance requires evaluating similar marks, related goods and services, overlapping customers and trade channels, and potentially conflicting logos or design elements. Because relevant rights may also arise from state registrations and common law use, businesses should investigate sources beyond federal records and document the searches performed. The results should then be analyzed under the likelihood-of-confusion standard to determine whether to proceed, modify the proposed mark, seek consent, or choose a different brand. A careful, comprehensive search cannot guarantee registration or eliminate every infringement risk, but it can support informed decisions, reduce the likelihood of costly disputes, and help protect the business’s investment in its brand.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Apple filed a 41-page complaint on July 10, 2026, in the U.S. District Court for the Northern District of California. The Apple-OpenAI trade secret lawsuit names OpenAI, io Products, and two former Apple employees, Chang Liu and Tang Yew Tan. An Apple spokesperson said, “significant evidence has emerged suggesting individuals employed by OpenAI wrongfully took Apple’s secret and confidential information.” The allegations are claims, not court findings.
This article is provided for non-attorneys to explain the Apple-OpenAI trade secret lawsuit and the bases for Apple's claims against OpenAI and related parties in plain language.
The complaint states that former employees stole Apple’s trade secrets to advance OpenAI’s efforts to enter the consumer hardware market. The iPhone maker claims OpenAI orchestrated a coordinated pattern of action to acquire Apple's trade secrets, involving OpenAI employees, Apple insiders, job candidates, and trusted suppliers.
Although more than 400 former Apple employees allegedly now work for OpenAI, Apple’s lawsuit is not based on employee recruiting alone. Apple alleges OpenAI crossed the line by exploiting Apple’s confidential information rather than independently building innovative technology. Apple also says it raised concerns with OpenAI in February of 2026, requested an investigation, and received no response.
A trade secret can include technical, engineering, business, or manufacturing information. Apple identifies five categories: hardware engineering and product design, including circuit architecture, unreleased products, roadmaps, and engineering data; manufacturing and process-engineering information, including custom machinery, metal-finishing techniques, materials, and manufacturability expertise; component technologies and supplier specifications; testing, validation, and development methods, including failure analyses and “negative know-how”; and supply-chain, supplier-relationship, logistics, and systems-integration information.
Under the Defend Trade Secrets Act, Apple must show that the information is not generally known or readily ascertainable through proper means, is derived independent economic value from secrecy, and that Apple took reasonable measures to keep it confidential. Apple alleges competitors could bypass years of research and capital investment, reduce development costs, and accelerate market entry. It cites confidentiality agreements, training, need-to-know access, secure repositories, encryption, physical security, supplier restrictions, code names, and chain-of-custody controls.
Apple must also prove trade secret misappropriation: acquisition by improper means, or unauthorized use or disclosure by someone who knew the information was acquired by improper means. Confidential information is not automatically a trade secret, so economic value and secrecy evidence will be central to Apple’s case.
Chang Liu, a former Apple iPhone engineer, allegedly kept an internal computer owned by Apple after leaving the company and used an authentication bug to access Apple’s shared network folders. Apple alleges Liu downloaded dozens of confidential files while working for OpenAI, including more than 1,000 pages of engineering material.
The files allegedly covered unreleased products, technical specifications, manufacturing and testing workflows, and proprietary project data. Apple also claims Liu coached another employee on copying confidential Apple information while avoiding security scrutiny.
Tang Tan spent over two decades at Apple, including serving as vice president of product design for the iPhone and Apple Watch. Here thereafter became OpenAI’s chief hardware officer. Apple claims Tan used internal project names to question Apple employees about unreleased products and directed job candidates to bring “actual parts,” batteries, logic boards, and other components to OpenAI interviews.
The theory is that OpenAI’s recruiting process encouraged disclosure of proprietary information, not merely discussion of general skills and experience.
Apple’s complaint also alleges misuse of confidential information concerning manufacturing processes and supply-chain relationships. It claims the corporate defendants, OpenAI and io Products caused an Apple partner to perform a confidential metal-finishing technique for OpenAI after misleading the partner into believing it had Apple’s permission.
Apple further alleges OpenAI used confidential terminology and supplier knowledge to ask targeted questions about batteries and components. These allegations extend the claimed trade secret misappropriation to Apple’s confidential partner network and supply chain.
In the lawsuit, Apple asserts four federal misappropriation claims: one each against Liu, Tan, OpenAI, and io Products. It also asserts breach of contract claims against the two former Apple employees based on their intellectual property agreements.
The Apple lawsuit alleges willful and malicious conduct and seeks actual-loss damages, unjust enrichment, a reasonable royalty, exemplary damages, attorneys’ fees, and interest. The contract claims provide an alternative path for proprietary information that might not satisfy every statutory requirement for trade secret status.
Apple seeks preliminary and permanent injunctions preventing the defendants from possessing, using, or disclosing Apple’s trade secrets and confidential information. It also requests preservation of evidence, return of Apple property, and an end to unauthorized access.
If successful, an injunction could hinder development of an OpenAI hardware device by restricting allegedly tainted information, workflows, or supplier interactions. The statute generally does not permit an injunction based only on what an employee knows or bar lawful employment without evidence of threatened misappropriation. However, there can be an injunction that places protective conditions on the employment to prevent the use of the plaintiff's trade secrets by the defendant company.
The two companies partnered in 2024 to integrate ChatGPT into Apple Intelligence, and the complaint says that agreement is not at issue. However, the case may signal a significant shift in the relationship between the companies. OpenAI CEO Sam Altman expanded into hardware and recruited former Apple designer Jony Ive for the project through the io Products transaction.
Apple’s complaint states that “OpenAI’s nascent hardware business now rests on the shakiest of foundations, rotten to its core by its illegal reliance on misappropriated trade secrets.” The trade secret litigation could complicate OpenAI’s hardware plans and potential IPO preparations.
OpenAI has denied wrongdoing, expressing in a prepared statement: “We have no interest in other companies’ trade secrets. We remain focused on building innovative technology that empowers people everywhere.”
The Apple-OpenAI trade secret lawsuit is ultimately about where lawful employee experience ends and misappropriated trade secrets begin. Apple alleges illegal reliance on confidential information to accelerate OpenAI’s consumer hardware entry; OpenAI says it remains focused on its own innovative technology. The district court will determine whether Apple proves protectable secrets, improper acquisition or use, breach of contract, and entitlement to an injunction.
For companies constantly developing breakthrough technologies, the case highlights that appropriate steps should be taken to protect trade secrets and prevent trade secret theft: prohibit candidates from presenting another company’s confidential information, train interviewers not to request proprietary work, audit departing employees network and computer activity, monitor and recover company devices, and terminate internal credentials promptly. Protecting a team’s hard work requires controls at the recruiting, offboarding, and vendor-management stages.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Patent claims are specialized formal descriptions of an invention that define the legal protection provided by the patent. However, the meaning of the words in the claims requires close evaluation of both the language of the claims, the detailed description of the invention provided in the specification of the application. During patent prosecution, which is the examination of a patent application by the United States Patent and Trademark Office (USPTO), an examiner may issue an office action rejecting the patent claims. The patent applicant has the opportunity to respond with statements or claim amendments. Those proceedings create the prosecution history, often called the file wrapper. In later patent litigation, that record can narrow the scope of the patent, making it easier to design around the patent claims.
This article provides a general overview to non-patent attorneys on how prosecution history estoppel is created during examination and how it affects the patent claims and the strength of the patent in later patent enforcement efforts.
Prosecution history estoppel is a patent law doctrine that prevents a patentee from later reclaiming subject matter surrendered during prosecution to obtain a patent. The doctrine is rooted in fairness and public notice: if an applicant narrows or explains a claim to persuade the USPTO to allow it, competitors should be able to rely on that prosecution history when assessing the patent’s scope.
The doctrine most often limits the doctrine of equivalents, which can allow infringement even when an accused product avoids literal infringement. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the Supreme Court addressed this balance directly. The patent owner had amended its claims during prosecution, and the accused infringer argued that the amendments barred the patent owner from asserting equivalents. 535 U.S. 722 (2002). The Court held that when an original claim is narrowed for reasons related to patentability, a presumption arises that the patentee surrendered the territory between the broader original claim and the narrower issued claim.
Importantly, Festo did not impose an absolute bar. Instead, the patentee may overcome the presumption by showing that the alleged equivalent was unforeseeable, that the reason for the narrowing amendment was only tangential to the equivalent, or that some other reason prevented the applicant from claiming it. Thus, a court may treat surrendered territory as outside the enforceable reach of the patent.
The USPTO examines patent applications by comparing the claims to the statutory requirements for patentability, including novelty, non-obviousness, written description, enablement, and definiteness. If the patent examiner determines that a claim is not allowable, the USPTO issues an office action explaining the reasons for rejection. The applicant then files a response and may amend the claims, and/or submit arguments that explain why the rejection is improper and the examiner's position is not supported by applicable patent law. See 35 U.S.C. §§ 131–132; 37 C.F.R. §§ 1.111, 1.121. This back-and-forth process is called patent prosecution with the USPTO. Because each claim amendment, argument, and explanation becomes part of the prosecution history, statements made to overcome a rejection may later affect the scope of the patent and enforcement of the patent.
Thus, the examination of a patent application creates a record of amendments and arguments that have a lasting effect on the strength and enforceability of the patent. Both the text of an issued patent and the underlying prosecution history must be analyzed to determine the precise meaning of the patent claims.
Amendments can create prosecution history estoppel during patent prosecution. A narrowing amendment made to overcome prior art rejections for anticipation under 35 U.S.C. § 102 or obviousness under 35 U.S.C. § 103, or another patentability problem, such as a lack of enablement or written description under 35 U.S.C. § 112, may surrender the difference between the original claim and the amended claim.
In Festo, the Supreme Court held that a narrowing amendment made to satisfy any Patent Act requirement may give rise to estoppel. Thus, amending claims in response to a rejection limits future claim interpretation and may prevent the patent owner from asserting a particular equivalent.
Argument-based prosecution history estoppel can arise without a formal claim amendment. When an applicant distinguishes prior art by arguing that the claimed invention lacks, requires, or operates differently with respect to a feature, those statements may surrender inconsistent interpretations later used to prove infringement under the doctrine of equivalents.
In Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995), the Federal Circuit held that a patent owner cannot obtain allowance based on one interpretation and then enforce the patent using another. The court treated prosecution statements as limiting both claim construction and equivalents, and held that arguments about one claim can restrict other claims containing the same limitation. Thus, statements made to overcome an examiner’s rejection may narrow future enforcement even without amended claim language.
Claim construction is the process of determining the legal meaning and scope of the patent claims before deciding literal infringement. The judge, not the jury, performs claim construction, often through briefing by the parties and a Markman hearing. See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The court reviews the claim language, the specification, the prosecution history, and, when appropriate, extrinsic evidence such as technical dictionaries or expert testimony. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
Claim construction is a preliminary step when determining literal infringement: after the court interprets the claims, the factfinder compares the construed claims to the accused product or process and asks whether every limitation is present.
Prosecution history estoppel factors into this analysis because statements and amendments made during prosecution limit what the patentee can later argue the claims cover. In Southwall Techs., Inc., the Federal Circuit noted that claims cannot be interpreted one way to secure allowance and another way against an accused infringer. Prosecution history estoppel limits equivalents after literal infringement fails, but the same prosecution statements can affect both analyses.
Challengers use prosecution history to identify concessions made by the patentee. The patent examination record will usually include assertions by the examiner that the original claims are anticipated, obvious, or unpatentable for some other reason. The record provides a guide for separate patent invalidity and non-infringement defenses. It may reveal close prior art, admissions about novelty and obviousness of the claims, and the differences between the claims and the prior art relied on to establish patentability and obtain allowance. See 35 U.S.C. § 282(b).
An opposing party will study the prosecution history thoroughly to determine the narrowing amendments and arguments that the patentee made during the examination process and use them to narrow the claims as much as possible during the claim construction process.
A district court determines the legal effect of the record, subject to Federal Circuit review on appeal.
The Supreme Court rejected an absolute bar but adopted a rebuttable, presumptive-bar approach. When prosecution history estoppel applies, the patentee is presumed to have surrendered all equivalents between the original and amended claims. This presumption is difficult to overcome. Under Warner-Jenkinson Co. v. Hilton Davis Chemical Co., an unexplained narrowing amendment is presumed to have been made for patentability. 520 U.S. 17 (1997).
Patent owners bear the burden to establish that the alleged equivalent was unforeseeable, that the amendment was only tangentially related to it, or that another reason prevented the applicant from claiming it. Festo, 535 U.S. at 740–41.
The Federal Circuit ruled that rewriting dependent claims into independent form, coupled with canceling the original independent claims, creates a presumption of estoppel. Honeywell International Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1134 (Fed. Cir. 2004) (en banc).
In appropriate circumstances, prosecution history estoppel applies to related patents as well. A surrender tied to a common term or limitation can constrain a sibling or continuation claim. Courts describe this cross-patent effect as prosecution disclaimer. The application of prosecution history to related claims in other patents is not automatic. For example, when material wording differs between the claims in related patents, prosecution history estoppel may not apply. See Microsoft Corp. v. Multi-Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir. 2004).
Foreign prosecution can also be relevant in limited circumstances. Caterpillar Tractor Co. v. Berco, S.p.A. considered statements from foreign proceedings while recognizing differences among jurisdictions. 714 F.2d 1110 (Fed. Cir. 1983).
Prosecution history estoppel varies across different jurisdictions. In China, Article 6 of the Supreme People’s Court’s Patent Judicial Interpretation II allows claim interpretation using prosecution files from the patent and related patents, particularly patents having a divisional relationship. Chinese courts can invoke prosecution history estoppel without a party’s argument.
Taiwan’s Patent Infringement Determination Guidelines also recognize file-wrapper estoppel for patentability-related amendments and responses. Taiwan ordinarily places the burden on the accused infringer to raise and prove it and generally does not use corresponding foreign files absent special circumstances. In that regard, Taiwan’s regulations and practices on prosecution history are less stringent than China’s. Businesses should not assume the same defense has the same scope in other jurisdictions.
For a patent applicant or patent holder, sound strategies include making only the amendment needed to overcome an office action, stating why it is limited, preserving meaningful other claims, and coordinating positions across related patents and jurisdictions. Administrative patent appeals under 35 U.S.C. § 134 should also be considered, rather than accepting an unnecessarily narrow claim.
For a company accused of infringement, the first step is to obtain and review the complete prosecution record, including related family files. Each amendment and response should be compared against the accused feature, the asserted claim, and any alleged particular equivalent. That review can reveal whether the patent applicant surrendered relevant claim scope, limited the meaning of a claim term, or distinguished prior art in a way that affects enforcement. In many cases, the prosecution history may support a strong claim-construction position, a doctrine-of-equivalents defense, or both.
Prosecution history estoppel can significantly affect the enforceable scope of a patent by turning statements and amendments made during prosecution into limits on later enforcement. Its effect depends on the claim scope surrendered, the reasons for the surrender, and how the relevant court applies the doctrine in litigation. For patent owners, applicants, and accused infringers, the file wrapper is therefore an important source of evidence for evaluating patent scope, potential design-around decisions, and litigation strategy. Reviewing the prosecution history early can help clarify the practical strength of a patent and identify issues that may affect claim construction, patent infringement analysis, and the doctrine of equivalents.
© 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
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