The US Patent and Trademark Office (USPTO) is a complex body with its own set of rules and norms, with which many attorneys are unfamiliar. However, there are no specific requirements for attorneys to file trademark applications with the USPTO. This can result in situations where an attorney new to trademark practice is learning on the fly, which can cause inefficiencies and backlogs in the system. How can new trademark practitioners best prepare themselves for trademark practice and protect their client's interests in front of the USPTO?
1. Protect the Word Mark
Word marks in standard characters enjoy the greatest scope of protection, so, whenever possible, make sure you file for your client’s word mark before filing for any stylized mark, logo design or composite mark (word mark plus logo design). If a trademark search reveals the mark is descriptive or otherwise weak, your best strategy may be to file for a stylized or composite mark to secure the registration. In any case, an initial search will help you determine the best course of action.
2. Identify the Proper Owner
Ownership is a threshold issue at the USPTO. Failure to file the application in the name of the proper owner may result in your application — and the resulting registration — being void ab initio. The proper owner is the entity that “controls the nature and the quality of the goods sold and the services rendered.” Generally, this is the entity that controls the purse strings related to the goods and/or services in connection with the mark. It’s very unusual for an individual to own a mark that is used commercially, so if your client will be conducting any sort of business connected to the mark, make sure their corporate identity is all set up before you file the application, as any assignments for intent-to-use applications in particular (absent a transfer of the business to which the mark pertains) is prohibited.
New rule alert: Remember that the new rules established as of February 15, 2020, require all trademark owners – regardless of whether they are represented by counsel – to provide an email address when the application is filed. The reason makes sense – the USPTO needs to get in touch with applicants, especially for serving opposition and cancellation complaints which are increasingly difficult for foreign applicants and registrants. We recommend that a special email be established for this purpose. You can counsel your client to set up a special email address something like email@example.com or a dedicated email address will satisfy the new rule.
3. Properly Identify the Goods and/or Services
All the goods and/or services that a client intends to use in connection with the mark should be identified in the application. The challenge for any trademark attorney is to draft the identification as broadly as possible while still conforming to the narrow requirements of U.S. trademark practice. During intake, be sure to ask your client about the scope of their business and key competitors so that you get an idea of what they do and who they compete with. Consult the Trademark ID Manual for suggestions to ensure your identification complies with the U.S. trademark rules of practice. The more closely your identification follows the ID Manual, the greater your chances of approval. If what you’re seeking is not in the ID Manual, consult recently issued registrations for guidance. Also, avoid drafting repetitive descriptions, as this type of identification will be ripe for auditing during maintenance and renewal since you will be required to submit specimens for each clause. A more complicated identification may also prove more difficult for a trademark owner to use long-term. When goods and/or services are still under development, but you want to secure a priority date, it’s always an option to file broadly and narrow later. The rules never allow you to broaden your identification. Ultimately, each good and/or service in the identification will need to be supported with a proper specimen before the registration can issue.
Responding to Trademark Office Actions
Receiving an Office Action is perhaps the most frustrating part of the trademark prosecution process. What’s the best way to proceed when the Office Action contains a substantive refusal of registration? Is your client’s mark doomed? How should you handle your client’s expectations and persuade the Examiner that this application should be approved for publication? In this guest blog post, Stacey Kalamaras shares her key tips for how to address this critical and sometimes scary part of the trademark application process.
1. Respond in a Timely Manner
Every Office Action is a letter from the United States Patent and Trademark Office (USPTO) Examiner that outlines any deficiency with a trademark application. If you fail to respond in a timely manner to any Office Action, it will result in the trademark application being abandoned and the client potentially losing its application priority date. However, there are Office Actions that deal solely with administrative issues that are easily correctable - so correct them ASAP! Some of these Office Actions would include an amendment to the identification of goods and services, an amendment to a color claim or mark description, an entity clarification, or a claim of prior registration, to name a few. A more serious Office Action would involve a substantive refusal on any one of these grounds: merely descriptiveness, the likelihood of confusion, merely a surname to name a few.
2. Agree to Administrative Requests
Who among us has not had to amend an identification of goods or services or agree to a disclaimer? If you’ve been practicing in this area even for a little while, you’ve done both! To minimize the need to amend the identification of goods or services, be sure to use the USPTO’s identification manual and don’t get overly creative if you draft an identification-free form for a particular client. For disclaimers, most requests will be agreed to unless you and your client agree it’s worth arguing that the term is not descriptive. Then you will be submitting arguments. If the Examiner calls you and asks you to amend the identification (or agree to a disclaimer) over the phone or email, try and get back to them as soon as possible. That will keep your client’s application moving forward. If you have a specimen that is refused, you will have a chance to submit a substitute specimen. When you do, remember that the substitute specimen must be in use at least as early as the application filing date (and not the Office Action Response date). If your client cannot meet that threshold, you can always amend the filing basis to “intent to use” to preserve the priority date and save the application.
3. Do Your Research on Substantive Refusals
No one likes receiving a substantive refusal of registration – it adds costs and time to any application, but don’t despair. Although most of these cases are not winnable on appeal, a solid argument can persuade the Examiner, so take them seriously. Be sure to do a search before you file to better prepare you (and your client) for what the competitive landscape looks like and help inform how likely you are to overcome the refusal. Keep in mind these best practices when responding to a substantive refusal:
Remember you generally have up to six months to respond. Take the time, especially if you need to respond to a substantive refusal. There are no brownie points for responding early.
If you are responding to a substantive refusal, you must submit legal arguments to demonstrate why you disagree with the Examiner. Circular arguments such as “the mark is not likely to be confused because it’s not the same as the other mark” is not a legal argument. Remember as a lawyer, it is your job to refute the Examiner’s evidence, supported by case law in order to be persuasive. With all the case law available, unless you (or your client, if you inherited the case) failed to do a search and the marks are identical, you should be able to find some cases that are helpful to your fact pattern.
Examiners cannot lift substantive refusals over the phone – do not call and ask them to.
Above all else, remember, the Examiners are not your opposing counsel. Don’t treat them as such. The Examiner has a job to do, just like you do. If you don’t understand something about the particular Office Action or refusal, call and ask them, but know they are not there to do your job. Make sure you are familiar with the rules of practice and if you need help, ask your colleagues and partners, not the Examiner. It’s not their job to do your job, nor are they allowed to give you legal advice.