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Apr
11

Four Underutilized Tools at the Trademark Office

When you have been practicing trademark law for more than 20 years, you pick up a few tricks along the way.  Below is a list of tools that are available to all—but frequently seem to be underutilized, misunderstood, or both!

  • Letter of Protest.  These are a great tool to call particular facts to the attention of an Examining Attorney which might not be obvious from the record.  We successfully used this tool one time to call the Examining Attorney’s attention to the fact that “agave syrup” is indeed very similar to tequila since tequila is made from the agave (cactus) plant.  Unless the Examining Attorney is a tequila aficionado this fact would likely have escaped her consideration and she would not issue a refusal to register an identical mark filed for agave syrup despite our client’s earlier registrations for the mark for tequila.  Letters of Protest have specific requirements and require a fee.  See TMEP sect. 1715 et seq.  Generally, the goal is to provide evidence to support your position and a brief statement explaining why the evidence should be considered.  If the Commissioner of the Trademark Office agrees, the Letter of Protest will be granted and the material provided to the Examiner.  Note:  A Letter of Protest is not a substitute for an opposition, nor does the fact that a Letter of Protest is “granted” equate to a refusal to register being issued.
  • Going up the Chain.  It has happened to all of us: we just do not believe that the assigned Examining Attorney understands the nuances of our brilliant legal arguments.  In such instances, it is sometimes useful to get the Senior  Attorney or Managing Attorney for the Examining Attorney’s Law Office involved.  The Senior and Managing Attorneys for each Law Office are listed at:  http://www.uspto.gov/trademarks/Other_TM_Contact_Info.jsp
  • Consistency Initiative.  In the olden days, co-pending applications (i.e., trademarks filed by the same applicant for similar marks and/or goods/services) were assigned to the same Examining Attorney.  No more!  Your applications all filed on the same day for complex goods and services can be assigned to different Examining Attorneys and the results can be very different Office Actions regarding identifications of goods/services, disclaimer issues, or even citations to earlier applications/registrations.  The PTO now allows an Applicant (or its counsel) to raise concerns about inconsistent practices between recent registrations through pending applications.  See http://www.uspto.gov/trademarks/notices/consistency_permanent.jsp
  • Getting identifications added to the Acceptable Goods and Services Manual.   The Trademark Office is constantly reviewing and updating the Acceptable Goods and Services Manual (searchable at http://tess2.uspto.gov/netahtml/tidm.html ).  How can you get the Trademark Office to consider your proposed identification?  The process is relatively straight-forward.  You simply send your suggestion by email to tmidsuggest@uspto.gov.  There is one important catch:  you cannot have a pending Office Action regarding the suggested language.  Also, if your proposed suggestion violates the PTO’s general requirements for clarity and specificity, it will likely be rejected.  Also, if the proposed suggestion could include goods or services in multiple classes, it will also be rejected.  Despite the limitations, this really is a potentially great tool for those applicants who have very specific identifications that they wish to use over and over and do not want to deal with repeated office actions regarding the same identification.

I am sure every practitioner has their own favorite tools and suggestions.  What’s yours?

About the author

Janice Housey