1. WORKING WITH TRADEMARK EXAMINING ATTORNEYS: TWO INSIDERS TELL ALL Danielle I. Mattessich Andrew S. Ehard Merchant & Gould

2. 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

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

4. THE EXAMINER'S DAY-TO-DAY Death Star - Quality Review –Telephone calls never enough for overcoming refusal

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

6. 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

7. 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

8. 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)

9. 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)

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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

16. 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)

17. QUESTIONS AND ANSWERS - WITHOUT PREJUDICE