what does a uspto examining attorney look at

The USPTO Examining Attorney does not look at the real-world usage of either company – the Examining Attorney only looks at what is within the “four-corners” of the registration or applications.

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What does a trademark examining attorney do?

Examining attorney reviews your application. After you submit your initial application and fee, your application is assigned a serial number and a trademark examining attorney. The examining attorney will review your application to make sure it meets all the legal requirements and that your trademark is registrable.

What kind of office actions does the USPTO issue?

May 29, 2021 · Trademark examining attorneys review trademark applications for compliance with the Lanham Act for the purpose of determining registrability in the United States. They research and write decisions on various statutory and procedural issues, work with applicants to correct informal defects in applications, and approve applications for publication and …

What is an office action and an examining attorney?

An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before we can register your trademark.

Can the USPTO help me select an attorney or agent?

The Examining Attorneys who review trademark applications at the United States Patent & Trademark Office review applications for compliance with a number of requirements. Some of the key issues are: Likelihood of confusion with prior pending applications or active registrations.

What do trademark examiners do?

A trademark examiner is an attorney employed by a government entity such as the United States Patent and Trademark Office (USPTO) to determine whether an applicant should be permitted to receive a trademark registration, thus affording legal protection to the applicant's trademark.

How do you respond to the likelihood of confusion rejection?

4 Ways To Overcome A Likelihood Of Confusion RefusalArgue that the marks or goods are different. ... Consent Agreements – agree to coexist with a prior registrant/applicant. ... Argue the prior registration/application is weak. ... Collateral attack – a last resort.

What factors would the USPTO consider when refusing to register a trademark?

The USPTO will also refuse registration of a proposed mark for many other reasons, including but not limited to the mark being: a surname; geographically descriptive of the origin of the goods/ services; disparaging or offensive; a foreign term that translates to a descriptive or generic term; an individual's name or ...

What is trademark examination?

Examination Report: The trademark application is examined by the Trade Marks Office in about two to four (2-4) months” time from the filing date and objections, if any, are raised. ... Relative Grounds (similarity with an earlier trademark already existing on the Trade Marks Register).Mar 6, 2018

What are the factors to consider when looking at the likelihood of confusion?

The DuPont factors are relevant considerations for making a determination on likelihood of confusion. The two most important factors are: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

How do you overcome trademark objections?

To overcome this objection, the applicant can include the following in his reply to the examination report: Distinctiveness of the mark: the applicant can explain how his mark is not descriptive of the goods or services for which he had applied for registration.Sep 30, 2020

What are the Polaroid factors?

The Polaroid FactorsStrength of the senior user's mark. ... Similarity of the marks. ... Similarity of the products or services. ... Likelihood that the senior user will bridge the gap. ... The junior user's intent in adopting the mark. ... Evidence of actual confusion. ... Sophistication of the buyers.More items...

How do you prove likelihood of confusion trademark?

Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.Feb 19, 2021

Why is likelihood of confusion important?

Likelihood of confusion is a part of a proving trademark infringement. It means that the public is likely to confuse your mark and the mark of another business. Trademarks are a valuable business tool. ... If another business uses your mark unfairly, it can cause you a great deal of damage.

How do you respond to an exam report?

This response is called “Reply to Examination Report”. The Reply can be submitted by email by attaching a scanned copy in colour pdf format to . [email protected] OR uploaded online to the website of the trademark office. It could also be submitted in person or by post to the relevant trademark office.Dec 2, 2017

How do I respond to an exam report?

The response can be submitted by sending a scanned copy (colour pdf file format) of the reply to examination report to [email protected] or could be uploaded online through the trademark office website or could also be submitted by person or post.

How long does it take to get a trademark approved?

Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.

What is a GS-11?

An attorney advisor (GS-11 "Trademark Examining Attorney") is an entry-level position. As an attorney advisor, you will be responsible for the complete ex parte examination of applications for the registration of trademarks to ensure compliance with the Trademark Act of 1946 and related statutes.

What is the USPTO?

The USPTO is a highly innovative agency that offers career growth in a diverse environment and a quality of life that is unique in the legal profession. Training of new attorneys. The Trademark organization proudly offers a comprehensive training program. No previous trademark experience is necessary.

How long does it take to become a trademark attorney?

Training is a two-year process, where the new attorney gains successive competence and independence, and becomes a Trademark legal expert. Career development. Trademark examining attorneys have ample opportunity for growth.

Where is the USPTO located?

Location. The USPTO is located in historic Old Town Alexandria, Virginia, near downtown Washington, D.C. The USPTO is a modern, technologically-advanced campus in close proximity to gardens and parks, shopping areas and a multitude of restaurants.

How to contact LifeCare?

This is a free service for employees and LifeCare specialists are available 24/7 for assistance. To contact LifeCare, please call 800-456-0845.

What is the USPTO?

The United States Patent and Trademark Office (USPTO) may issue several different types of office actions about your trademark application. This page focuses on office actions that trademark examining attorneys send during the application process.

How long does it take to respond to an office action?

Generally, we must receive your response to an office action within six months from the date it issued for the response to be considered “timely.”. Some types of office actions have a shorter deadline. Read your office action carefully to determine the specific deadline for the response.

What is an office action?

An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before we can register your trademark. In an office action, an examining attorney may require ...

What is an examiner's amendment?

Examiner’s amendments are used to move your application toward registration faster. Priority action. A priority action confirms in writing a discussion you had with the examining attorney by phone or email about the legal problems with your application.

What does an examining attorney do?

An examining attorney typically includes and discusses evidence that supports a refusal and/or requirement in an office action. For example, an examining attorney may attach evidence of third-party registrations to show that certain goods are related because they are provided by the same business owner.

Finding a registered patent practitioner

OED maintains a register of active patent practitioners who are eligible to represent others before the USPTO in patent matters. Only registered patent attorneys and agents, and individuals granted limited recognition, may represent patent applicants before the USPTO.

Disciplined practitioners

For information about practitioners who have been disciplined, search OED Final Decisions in the FOIA Reading Room.

How long do you have to respond to an office action?

Once the Office Action is sent by the U.S. government, you have six-months to respond address all of the issues in the Office Action or your application will be abandoned. However, you have a few options and the best one will be determined by a lot of different factors. Let’s go over the potential options.

Who is Josh Gerben?

Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

What are technical issues in trademarks?

Technical issues relate to the requirements of a USPTO trademark application. These issues are generally easier to overcome and the examining attorney usually includes suggestions for how to overcome these application deficiencies.

How long does it take to respond to a trademark?

Any applicant who receives an Office Action is strongly encouraged to speak with a trademark attorney as soon as possible. Responses are required within six months and as is the case with substantive issues, it might require some time to prepare a sufficient legal argument.

What is substantive issue?

Substantive issues relate to whether the substance of the application is sufficient to proceed with registration. These issues become quite complicated and almost always should be assessed by a trademark lawyer because they require substantive legal analysis and arguments to be made in response.

How often do you have to file a Section 8 and Section 9?

Every ten years, the owner has to submit a combined Section 8 and Section 9 filing. This filing combines the Section 8 filing mentioned above with a renewal application, or a request to keep the registration active for the next ten years.

What is the heading of an office action?

The heading of an office action contains application information such as the serial number, the mark, and correspondent and applicant information. The office action links to TSDR to view the submitted application on TSDR or access Office Action Response Forms.