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

Top 12 Trademark Prosecution Tips from a USPTO Examiner

Alt Legal Team | September 27, 2021
6 min read

This article was written by a USPTO Trademark Examiner in their personal capacity for publication on the Alt Legal blog.

Tip #1: Examining attorneys are on your side. It may not feel like it when you get an unexpected refusal, but examiners want your trademark applications to register as much as (if not more than) you do. The USPTO is open about the fact that its mission is to register trademarks unless there is a specific reason not to. That perspective informs all of the specific policies the USPTO has built up over the years. At the micro level, it means that when an examiner issues a refusal, it’s because they have to, not because they want to.

Tip #2: The way examiners are evaluated reflects the fact that they are on your side. While working for firms, I sometimes heard people say that examiners are evaluated based on the number of Office Actions they send out. This is not true. Put as simply as possible, each application an examiner reviews is worth a certain number of “points” for them. The examiner gets half the points when they take a first action on the application (which often means sending an initial refusal), then the other half of the points if and when the application is ready to move forward to publication. So the examiner’s dream scenario for an application is the same as yours: that it has no issues and can move on to publication right away. When that happens, the examiner gets all the points right away (both the “first action” points and the “ready for publication” points) and you have a happy client. Examiners don’t like making refusals or having to get issues fixed because that costs time they could be spending moving on and getting points from other applications. For more on the USPTO Examining Attorney point system, see this session from Alt Legal Connect 2020 with former USPTO examiner Courtney Alvarez.

Tip #3: Learn how to search using TESS. It’s tempting (and unfortunately common) for firms to do trademark clearance by: (1) Sending the mark off to an external company, (2) Getting a 500-page “report” back, and (3) Forwarding that “report” to the client, maybe with a cover letter or a phone call to help them make sense of what it all means. Resist this temptation. It’s slow, expensive, and confusing for clients. Your firm can and should be doing more of the legwork itself. Spend some time with the USPTO’s comprehensive guide to searching* (the “Pattern Matching” and “Truncation Operators” are especially useful to learn about), and start finding ways to work more TESS searching into your process. This can be especially useful in scenarios where your client proposes a mark that is obviously blocked. If you can point to the reason why (i.e., the specific registrations that are a problem) without having to bring on the time delay and additional expense of a bulky, overwhelming search report. That’s a big win for everyone.

*The long TESS Online Help guide is inexplicably hard to link to because of the way TESS sessions work, but you get there by: (1) Starting here, (2) Clicking Word and/or Design Mark Search (Free Form), then clicking any of the links under US Trademark Field Codes.

Tip #4: Use the fact that XSearch results are public to your advantage. XSearch is the USPTO’s basically identical internal version of TESS. Another great reason to learn how to search is that it gives you self-awareness superpowers as to how good your firm is at trademark clearance. Every search that an examiner does is publicly available. Find these searches by going to TSDR, putting in your application serial number, clicking the “Documents” tab, then clicking the “Search Summary” pdfs.This is a totally free way to ensure that your search/clearance process is always improving. Take an application you filed recently and think back to what you flagged for your client as potential issues. Then pull up the examiner’s search report and literally copy-paste each line of it into TESS. By looking at exactly what the examiners are looking at and considering these cites, you’ll build a much stronger understanding of where the line is between “§2(d) cite” and “not a §2(d) cite.” Repeat as often as possible, and you’ll get really good at searching and advising your clients appropriately. Check out these Alt Legal resources on TESS searching: Alt Legal Webinar – Search Party: Basic Principles of TESS Searches, Alt Legal Webinar – Searching Rescue: Advanced TESS Searches, and How to Search TESS like a Trademark Examiner.

Tip #5: Use TEAS Plus. Always. Honestly, I think the scenarios in which someone should file a regular application are so narrow that it’s better to just adopt the heuristic of pretending that option doesn’t exist.

Tip #6: Writing your own ID is the easiest way to mess up your client’s application. Other than the $100 per class you save for your client, TEAS Plus actually does you a favor by forcing you to use existing ID Manual entries rather than writing an ID from scratch. What’s that old saying about how the definition of malpractice is “a lawyer with a blank piece of paper?” The ID Manual is huge and covers virtually anything your clients could be doing. Just find entries that work and use them. Doing otherwise leads to unexpected §2(d) cites, fees to add classes later, and even scope issues that render it impossible for your client to make it to a registration that covers what your client thought it would.

Tip #7: Always include translations. When your trademark includes foreign words, include translations of those words. This requirement applies in more situations than you probably think it does. It doesn’t matter whether your client is intending to use foreign words or not; if the parts of the mark (or the entire mark) have meanings in any major foreign languages, the USPTO is going to require a translation. Filing a TEAS Plus app without the required translation statement is an easy way to get stuck in the awkward situation of needing an extra $100 to keep the application moving forward.

Tip #8: Relatedness of food & beverages isn’t always common sense. Some §2(d) cites feel pretty obvious, like identical marks for cheese and yogurt or for wine and cheese. But what about beer and tea? Specific types of food in Class 29 and other specific types of food in Class 30? The USPTO often makes these types of cites and will have the evidence to back it up, so be careful to look for traps in counterintuitive places. As always, the coordinated class list is a great place to start your evaluation of whether two sets of goods might be related. Check out Alt Legal’s article about coordinated classes.

Tip #9: Always call. Getting examiners on the phone is easy and is definitely an underutilized tool for thinking through how to respond to a specific Office Action. Calling to talk through a refusal will always help your chances of getting past it, and many examiners will be pretty candid about where you stand. Calls are better than emails: examiners are inherently cautious about what goes into writing. After all, they did just spend a bunch of time and energy writing up all the issues very carefully in the Office Action!

Tip #10: Call/email examiners back right away when they reach out to you. Be sure to get back to them right away even if it’s only to say “I’ll ask my client and will respond [tomorrow, etc.].” Examiners are busy juggling many different deadlines, so the courtesy of letting them know something is on your radar goes a long way.

Tip #11: Domicile Addresses. This is a big point of emphasis right now. You need a legitimate address for your client (you can mask it from public view if they want to.) Make sure the address has a street number and ZIP code and is not a P.O. Box, “c/o” address, or mail forwarding service. The address must be where they live or where their company is headquartered.

Tip #12: Specimens. Err on the side of submitting more; you just need one that works. Make sure you put the URL and access date on them (software like SnagIt is very helpful for this.) Forgetting to include this information is an easy way to turn an acceptable specimen into an unexpected refusal. Check out Alt Legal’s article containing additional tips for acceptable specimens.

 

Bonus Tip #1. Disclaimers. If they’re going to be required, just include them. Don’t worry about overdoing it; if you disclaim something that you didn’t need to, the examiner is required to tell you that.

Bonus Tip #2. The TMEP. The Manual is just an absolute treasure trove of information and examples about almost every scenario a trademark application might run into. If you’re not spending a good amount of time reading and learning how things work, you’re missing out. Reading the Manual will help with everything from filing better applications to making more informed decisions about how and when to respond to Office Actions.

Bonus Tip #3. Examiners are really good at their jobs. Between eight weeks of full-time training, two years of mentorship, and eight hours a day of just making tough trademark calls repeated over and over, there’s a lot of experience and context that goes into every letter you see come out of the USPTO. That expertise is something you should consider, especially when trying to realistically improve your client’s chances of getting past a refusal. While mistakes sometimes happen, the USPTO gets it right the overwhelming majority of the time. This also means that “rolling the dice” on an application that you know has an issue is basically just setting your client’s money on fire. If you know there’s a registration that blocks you, the examiner really isn’t going to miss it.

Bonus Tip #4. Overcome most §2(d) refusals by amending the ID. You should think more about amending your ID (and/or coming back with a consent agreement) than about arguing that there is no confusion. Similar to the last point, examiners have seen it all when it comes to §2(d) “no confusion” arguments and they have established counterarguments ready to go for most of what you can come up with. Again, if examiners issue a refusal, it’s because they have to, not because they want to. Coming up with a creative way to narrow your ID will often do you more good than arguing the law.

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