Is the trademark examiner a licensed attorney?

Yes, trademark examiners at the USPTO are licensed attorneys at law. That is why they are called examining attorneys as opposed to trademark examiners. Unlike a patent examiner who most likely did not go to law school, your trademark application will be reviewed by an examining attorney who will likely be well versed in legal arguments and case law. Knowing your audience plays a significant role in crafting a strategy to overcome a trademark refusal.

What are ineffective strategies for persuading trademark examining attorneys?

I have found that simply repeating boilerplate case law will have little to no effect in convincing an examining attorney to withdraw a refusal. There is nothing wrong with starting with some basic caselaw to set up the arguments, but persuasion will require much more repeating cases that examining attorneys have read countless times. I sometimes wonder if an examining attorney’s eyes glaze over case citations.

What might help to withdraw a trademark refusal?

Specific facts and examples can go a long way in convincing an examining attorney to withdraw a rejection. For example, if you are dealing with a likelihood of confusion refusal, see if multiple registrations owned by different parties exist for similar marks. If so, cite those examples and build a case for the mark being relatively weak due to high numbers of registrations and usages.

If you are dealing with a descriptiveness refusal, look for examples of similarly descriptive marks registered on either the Principal Register or Supplemental Register. Put those examples in a table and submit copies of their USPTO reports when responding to the Office Action.

Would it help to speak with the trademark examining attorney?

It depends. Sometimes a telephone call may be helpful in gathering information that is not clear in the Office Action. For example, would the removal of certain goods or services overcome the refusal?

When it comes to minor issues, the trademark examining attorney may call you or trademark lawyer to resolve simple matters. Examining attorneys are encouraged to telephone or email the applicant or his representative whenever possible to make progress in a trademark application.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com