U.S. trademark prosecution: It’s not rocket science, more like an art

The identification: What seems like an easy task is frequently difficult because the client and the USPTO speak different languages

Applying for a federal trademark registration seems straightforward. The elements of an application are the identity and address of the owner, the mark, a description of what the mark will be used for and the filing fee. If the owner has already used the mark, the dates of first use and an example or "specimen" of how the owner uses the mark are needed. As simple as it seems, The Office of the Chief Economist of the USPTO reported last year that at least one non-final office action issues against a majority of applications. This article focuses on one of the common stumbling blocks to registration: the identification of the goods or services. A flawed identification can delay or defeat an application.

What seems like an easy task is frequently difficult because the client and the USPTO speak different languages. Engineers are keen to emphasize the novel capabilities of the product. Marketers naturally want to include features that give them the competitive edge. The trademark lawyer seeks to describe the client’s goods or services in the broadest way that is acceptable to the USPTO in order to expeditiously achieve registration. The task requires translating the description provided by the client into “trademark talk.” Internal clients may think the trademark lawyer doesn’t understand the business and become frustrated. Rather than incur the client’s ire and leave the impression that he or she is not compliant with the client’s instructions, a prosecutor may be tempted to use the lay client’s description in an application. This courtesy is not in the client’s best interest. It can result in a refusal of the application, and while a description may be changed, it may not be broadened. Any amended description must be within the scope of the original.

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Marsha K. Hoover

Marsha K. Hoover is a partner at Marshall, Gerstein & Borun LLP who has extensive experience in trademark prosecution and counseling, copyright law,...

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