WORKING WITH TRADEMARK EXAMINING ATTORNEYS:TWO INSIDERS TELL ALL

Danielle I. MattessichAndrew S. Ehard

Merchant & Gould

THE EXAMINER'S DAY-TO-DAY • Production Schedule

– Only received credit for first action and final disposition– No credit for non-final actions, appeal briefs, SOU's, AAU's, requests

for reconsideration– No credit for telephone discussions with applicants– Maximum benefit to Examiner is first action publication of mark– Work the system

THE EXAMINER'S DAY-TO-DAY• Searching• Office Action drafting• Research• Education• No Secretaries

THE EXAMINER'S DAY-TO-DAY • Death Star - Quality Review

– Telephone calls never enough for overcoming refusal

APPLICATION PREPARATION - MOST COMMON MISTAKES • Application in wrong name• Identification too narrow• Drawing - Must match use in commerce

APPLICATION PREPARATION - BEST PRACTICES • Objective of Outside Counsel - Secure Registration as

efficiently as possible for your client– Include obvious disclaimers in application– Include definite description of goods/services and avoid the terms

"including" and "products"– Include entity type/citizenship– If submitting specimen, must match the mark on drawing page– Reference prior registrations owned by Applicant– If unsure of date of first use, pick latest date or file ITU– If submitting color drawing, provide "color claim" and "color

description"– Record name changes, mergers, assignments online– Examining Attorneys have no discretion as to deadlines

OFFICE ACTION RESPONSES - IN GENERAL • Address all refusals or informalities raised by the Examiner• Evidence, Evidence, Evidence, Evidence, Evidence,

Evidence.– Case law is great, evidence wins cases– Focus on evidence relevant to ex parte proceedings

• Focus on strength or weakness of mark on register first• Include evidence of common law dilution

OFFICE ACTION RESPONSES - IN GENERAL • Call Examiner to resolve informalities

– Disclaimers– Identification– Ownership– Prior Registrations

• DO NOT CALL EXAMINER to get their "feeling" about strength of refusal– Will not and cannot withdraw refusal over the telephone– Must have arguments and evidence in file to withdraw refusal

(USPTO Quality Review requires this)

OFFICE ACTION RESPONSES - Likelihood of Confusion • To overcome Likelihood of Confusion refusals, show dilution

only via 3rd party registrations in use in the United States– Section 44/66a registrations are not considered because they do not

reflect the marketplace

• Evidence, Evidence, Evidence, Evidence, Evidence. Arguments Not Enough– Prove marks are different by providing evidence of how the marks are

used by the respective parties in the marketplace (e.g. catalogs, websites, product packaging)

– Prove goods/services are not related or have different trade channels (advertisements, news articles, websites)

OFFICE ACTION RESPONSES - Likelihood of Confusion • Narrow identification of goods/services or trade channel• Consent to register must be in the form of an agreement

clearly outlining why marks and related goods/services are not likely to lead to confusion in the marketplace

• Check renewal dates for cited marks

OFFICE ACTION RESPONSES - Merely Descriptive • Attack Examining Attorney's evidence - Examiner has burden

– Does Examiner's evidence discuss only your mark?• Third party registrations to show distinctiveness of mark or

specific term within mark• Negative evidence - News articles, websites to show use in

commerce in distinctive fashion• Section 2(f) - Acquired distinctiveness is in use for at least five

years– Mere arguments that the mark has been used for many years is not

enough, must use statutory language to claim acquired distinctiveness• Supplemental Register - If in use less than five years

OFFICE ACTION RESPONSES - Surname • Evidence, Evidence, Evidence, Evidence. Arguments Not

Enough• Dictionaries, atlases, news articles, telephone directories

(negative evidence)• Onelook.com (Not to be confused with Wikipedia)• Focus on evidence establishing meaning other than that of a

surname • Section 2(f) or Supplemental Register

OFFICE ACTION RESPONSES - Informalities • Specimens - Describe what the specimen is (e.g. point of

purchase display)• Specimens - For services, the Examiner must be able to infer

what the services are by looking at the specimen

POST REGISTRATION AMENDMENT TO MARK • Material alteration test

– Can have slight revisions to stylization of mark to reflect modernization of mark

– Can delete generic matter if overall impression of mark is not altered

• Examining Attorney no longer has jurisdiction

POST REGISTRATION RENEWALS • Make sure all goods/services are in fact in use or delete from

registration– Fraud is a hot issue at the TTAB of late

MISCELLANEOUS • Realize the Examining Attorney does not always have

jurisdiction over a pending application (e.g. After publication but before filing Statement of Use)– Send concise e-mail to Examiner for forwarding to appropriate

division

• If Opposition proceeding has commenced, all amendments to the application must be filed directly with the TTAB

• Take advantage of hierarchy - If the Examining Attorney's refusal or informality is "clearly an error", do not hesitate to contact the Examiner's Senior or Managing Attorney (Law Office telephone numbers on website)

QUESTIONS AND ANSWERS - WITHOUT PREJUDICE