WHAT IS THE ROLE OF A TRADEMARK EXAMINING ATTORNEY?
Trademark examining attorneys work at the United States Patent and Trademark Office. These individuals are bona fide licensed attorneys who review and make decisions about trademark applications. You can expect the examining attorney who is reviewing your application to have extensive knowledge of trademark law and legal precedents.
Remember, this is the person who will approve your application or issue a trademark refusal. Understanding that he or she is a licensed attorney will be an important factor to consider when developing a strategy to refute a possible trademark application rejection.
Let’s look at what arguments might persuade an examining attorney to reverse a trademark refusal and what arguments won’t help your case.
WHAT MAY HELP PERSUADE AN EXAMINING ATTORNEY TO WITHDRAW A TRADEMARK REFUSAL?
Examining attorneys responses tend to respond well to applicants citing specific examples when arguing for the withdrawal of application rejection.
Let’s say that the examining attorney has rejected your application because they believe your mark is too descriptive. Your best option is to look through Principal Register or the Supplemental Register for examples of marks that are similarly descriptive in nature. When responding to the office action, be sure to include copies of those other trademarks.
Examining attorneys also commonly reject trademark applications on the basis of the likelihood of confusion. If your application is rejected because of a likelihood of confusion, you should again look through the Principal or Supplemental Registers to see if there are other parties who have registered similar marks. If there are multiple parties who have similar marks, then you can make the argument to the examining attorney that the mark is, in fact, relatively weak because of the multiple registrations and usages. Therefore, there’s no reason to reject your application.
WHAT ARGUMENTS AGAINST TRADEMARK REFUSALS DON’T WORK?
Simply responding to an office action by quoting standard case law will not persuade an examining attorney to reverse their decision to refuse your mark. You can assume that the attorney already knows the cases you’ll be citing and have probably already considered them before making their decision.
You can certainly set up your arguments by citing case law, but unless those arguments are followed up with specific examples as outlined above, then you are likely not going to be successful in your efforts to change minds.
SHOULD I HAVE A CONVERSATION WITH THE EXAMINING ATTORNEY?
If there is anything that is unclear in the office action, then it may be helpful to have a quick conversation with an examining attorney. You may find that fixing relatively minor issues may be all it takes to have the refusal reversed.
Also, you should know that examining attorneys are encouraged to reach out to trademark applicants or their attorneys via phone or email to resolve minor issues before issuing office actions. The USPTO wants examining attorneys to keep trademark applications moving forward whenever possible.
SHOULD I HIRE MY OWN TRADEMARK ATTORNEY?
Before you submit a trademark application be sure to consult with one of our trademark attorneys. We can help ensure that your application is complete and accurate, which will increase the likelihood that it will be approved. If you receive an office action, then we can help you draft a satisfactory response to the USPTO.