Thinking Like an Examining Attorney

By: Vivek Vaidya

When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), an examining attorney is assigned to your application and decides whether or not to allow the registration.  He/she will consider if the registration should be barred because of a host of trademark law issues, the most basic being if another mark is registered that looks or sounds similar and/or is involved with a similar stream of commerce.

That is why it is important to think like an examining officer.  Instead of using and applying for a mark that cannot be registered, it is best to be proactive when deciding what mark to use when starting a business and when going through the registration process.  Before filing a trademark application, you should perform as rigorous a search for conflicting marks as the USPTO examining attorney. Consulting with a trained attorney during this search process, and working with an attorney to analyze the viability of the mark based on trademark law can often end trademark disputes before they arise and ensure a seamless registration rather than applying to register a mark that will only cause headaches later on.
Once a mark is chosen, you must file an application with the USPTO.  The application contains many questions about the business, including making a determination of what class(es) to register in and an appropriate description of the goods or services that the mark is associated with.

After an application is filed, an examining attorney will analyze the application. The examining attorney relies on the Trademark Manual of Examining Procedure (TMEP) for guidance and decides whether or not to allow the registration.  If the examiner rejects an application for any reason, the examining attorney will issue an office action letter laying out his/her objections.
Responding to office actions requires a deep understanding of trademark law and USPTO process. Typically applicants hire experienced attorneys to handle office action responses.

If the examining officer decides that either the trademark should be registered straight out of the gate or the objections in an office action are remedied, the mark is published under a federal publication called the Official Gazette for a period of time.  This publication provides notice to others that the mark is to be registered, and it gives them an opportunity to oppose the registration. If there are no oppositions, the USPTO will register the mark, and mail you a certificate of registration. At this point, you will officially own a federally registered trademark, and all the benefits that come along with it.
Need some help thinking like an examining attorney?  Contact Bend Law Group, PC for all your trademark needs at 415-633-6841.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.