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Alt Legal Blog

Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal Connect Session Summary: A Thorough Examination: An Interview with a Recent Trademark Examiner

Alt Legal Team | October 28, 2020
6 min read

Thank you to Karina Maas for participating as a Law Student Reporter at Alt Legal Connect! Karina is a 2020 graduate of Brooklyn Law School. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.

On Tuesday, October 27, Dorna Mohaghegh of Frankfurt Kurnit Klein & Selz interviewed Courtney Alvarez, who was a USPTO trademark examiner for over a decade before recently launching her own firm, CMA Trademarks, LLC, during the session, “A Thorough Examination: An Interview with a Recent Trademark Examiner.” Courtney answered questions about procedure and provided helpful tips and tricks to help ensure successful trademark registration.

From the perspective of trademark attorneys and applicants, the trademark prosecution process sometimes seems opaque, convoluted, and confusing. However, consistency, transparency, and efficiency are key elements in the day-to-day work of a USPTO trademark examiner. Step into the mind of a trademark examiner to learn how the process happens from the other end.

Trademark examiners come from a wide variety of backgrounds — straight from law school, as law clerks, solo practitioners, as associates from smaller boutiques to biglaw, and everything in between. It can take anywhere from 1 to 1.5 years for a new examiner to work independently; they go through an initial training “boot camp” and are assigned a supervising mentor who reviews their work before they stake out on their own.

Trademark examiners’ day-to-day work is determined by three separate structures: the production system, the quality review system, and internal deadlines. At its core, the production system tracks how much work examiners do by assigning “points” to processed trademark applications. Each trademark class within an application, no matter how simple or complex, is assigned two points. Examiners earn their first point of work by responding to the initial application, such as with an office action, and their second final point on final disposition. For example, if an application seeks registration of a mark in three classes, that entire application is worth six points (two points for each of the three classes). Contrary to what some lawyers may believe, examiners hate final refusals — it’s a lot more work and does not generate any extra points! Examiners appreciate higher-quality applications without substantive refusals and many procedural errors.

While the production system encourages examiners to work quickly, the quality review system ensures that examiners work carefully. Their work is reviewed constantly by their managers, a separate quality control department that randomly pulls applications in progress, and finally upon the publication of trademarks. Examiners receive bonus incentives for quality work, and if their rating falls too low, they lose out on those bonuses. On the flip side, because the quality review system and production system are so transparent, the teleworker program is “absolutely huge” at the USPTO with many examiners working outside of the office.

Finally, examiners are constrained by internal deadlines. When assigned an application, examiners are bound by a seven day deadline for first office actions. Subsequently, there is a 21 day deadline for subsequent office actions or final actions. The USPTO strongly encourages its examiners to reach out to applicants over the phone and email to move applications along quickly. It’s not in an examiner’s best interest to issue an office action against an applicant without reaching out first, and if they do, it’s usually because the examiner is completely swamped by their docket. But don’t be surprised if an examiner sends you an email asking for a response by a certain date, “or else”—they’re working on a deadline!

Trademark applications are assigned to examiners entirely randomly, barring specific special circumstances. First, similar applications with the same ownership that are waiting to go through are typically going to go to the same examiner and be examined at the same time. If by some chance this doesn’t happen, applicants can request that their applications be considered jointly by the same examiner; otherwise, examiners are expected to work together to ensure that any guidance given is uniform and consistent. Second, some special marks are assigned to dedicated examiners who specialize in those marks. For example, sound marks; color marks; political marks; Olympic marks; some categories such as cheese, tequila, and cannabis; and marks related to major events such as 9/11 and Kobe Bryant are considered special marks. Outside of these special marks, examiners work with a wide variety of applications and can be expected to process complex international applications and domestic, as well as word and design marks.

When approaching an application, examiners are required to go beyond the four corners and rely on real world evidence in making their determination. An examiner might use dictionaries, Lexis, Wikipedia, and third party search engines like Google to find evidence. More experienced examiners tend to see the same basis for rejection, over and over again. As a result, examiners tend to have their favorite “go-to” evidence when citing a rejection. It is important to understand that examiners cannot and do not rely just on third party registrations, but are very proficient internet researchers.

When tackling an application for the first time, an examiner will also spend time understanding the particular category of goods and services for which trademark protection is sought. They will also carefully determine if procedural requirements are met, such as specimen submissions. And of course, they will go down the checklist of substantive trademark law issues such as likelihood of confusion, use of the mark in commerce, descriptive or generic uses of the mark, acquired distinctiveness, functionality, and ornamentation. Perhaps most substantively, examiners will then search for conflicting marks and gather evidence of relatedness.

Performing a knockout search on TESS is a deceptively simple process: the actual search is easy, but breaking out the proposed trademark into its constituent parts and searching for those terms is and art form. The sophisticated lawyer and trademark examiner will attempt to break out the mark in question into discrete chunks while considering what parts might be confusingly similar to other marks.

When searching for word marks, the examiner will break out larger words into their smaller constituent parts. Think of license plates; people are incredibly creative when spelling. As a note, it is relatively uncommon for an examiner to search for unrelated synonyms (e.g., an examiner will be highly unlikely to search for “confidences” when the mark includes the word “secrets”). However, it is common for examiners to search synonyms for terms as long as they sound and look alike as well.

Using TESS’ advanced search functions is essential to capturing as many relevant results as possible. For example:

  • Search for letters that carry similar sounds. Whene
    ver you search for an “s”, also search for a “z” (e.g., a search for {“sz”} will return DAYS and DAYZ). By that token, “e, y, and i” are related as are “t and d” and “c, k, and q”. It may also be a good idea to search for marks that include two or more letters together by adding “1:2” to the search term so that it will return, e.g., DAYSZ.

  • When searching for a vowel, use {v0:2} to capture search results that include no vowels in addition to one or two vowels.

  • In addition to searching the basic index, also make sure you are searching the translation index. You can also limit your search to only live marks.

When performing a TESS search for a design mark, make sure to capture all the nuances in a larger code by using the “$” function. For example, to see all types of elephants, an examiner would search for “0303$[dc]”. It can take some teamwork and a lot of common sense to break down the composite parts of more abstract design marks. Generally, it is useful for an application to include a detailed description of a design mark for the examiner to work off of. Note, however, that the examiner will not be distracted by a description of “vertical infinity symbol” and will perform a search for the number eight, regardless of the applicant’s intention.

As a rule of thumb, when you have a word or design mark with more than one composite part (multiple words/designs, or can be broken out into more than one word/design):

  1. Search for the terms together

  2. Search for the terms separately

  3. If searching separately, and there are too many results, try searching within related coordinated classes instead. For example, if the mark is being sought in category 041 (live visual and audio performances), also search in 009 (recorded visual and audio media). The USPTO’s website includes a list of other coordinated classes to use in your search.

When it comes to navigating other aspects of the trademark prosecution process, the Trademark Manual of Examining Procedure (TMEP) is the examiner’s bible — the more you familiarize yourself with it, the better off you’ll be. Other helpful resources include the TTAB reading room, which has been newly updated with increased navigation and search functionality, as well as The TTAB Blog, which walks through recent and interesting cases.

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