On Wednesday, April 24th, Eunice Chung from the DLA Piper’s Washington, DC Office attended the program, “TRADEMARK DAY: BEHIND THE SCENES AT THE USPTO,” co-hosted by the ABA-IPL and U.S. Patent and Trademark Office (“USPTO”) at the USPTO Campus in Alexandria, VA. The USPTO officials presented on various topics including the trademark examination process, electronic trademark application filings, USPTO website tools, USPTO’s operations, and U.S. Trademark Trial and Appeal Board (“TTAB”) filings and procedures, among many other topics, and concluded with a live TTAB hearing. Some of the participants of this informative program included Commissioner for Trademarks, Deborah Cohn, and Chief Administrative Trademark Judge Gerard F. Rogers.
Some takeaways and common mistakes of practitioners presented during this program are as follows:
1. The USPTO’s main objective in examining trademark applications is to promote resolution of issues and as such, it evaluates its Examining Attorney’s work/ production based on their resolution skills and grants a credit for their work only when their actions lead to a resolution of issues. For example, the Examining Attorney receives a credit for their first action and their last disposition (or resolution), but not for their second or final refusals because these actions do not resolve any issues. The absence of credit for follow up actions explains the USPTO’s initiatives to encourage Examining Attorneys to call an applicant for simple issues, such as amending identifications, because a phone call is a quick and easy way to resolve these issues.
2. The USPTO is working on limiting the number of petitions to revive. Therefore, practitioners should remind their clients about this development and stay on top of maintaining deadlines to avoid unintentional abandonment of their applications.
3. The USPTO uploaded many new information/guidelines on their website, such as Trademark Examination Guides (which included updates relating to webpage specimens as displays associated with goods). This type of resources may be helpful to clients who are new to or unfamiliar with trademark law.
4. In ex parte appeals, the TTAB does not handle requests for amendments to the identification of goods and services. If an Appellant has these issues, it is best to file a Request for Remand, which will be sent back to the Examining Attorney for consideration.
5. In a Final Office Action, if one of the grounds for refusal is likelihood of confusion with a registered mark, the TTAB highly recommends, before the Appellant file their Brief, that the applicant check the USPTO records to confirm whether the cited registration has been cancelled or has expired before filing their brief in the ex parte appeal. If the cited registration is no longer valid, it will save clients significant time and money.
6. If the applicant desires an oral hearing in connection with the ex parte appeal, the request should be made in a separate document and not included in the brief, reply brief, or any other documents filed with the TTAB. The reason behind is that the person reviewing such documents may easily miss the Request for Oral Hearing if the request is made within those documents. As such, such request should be made by a separate notice filed no later than ten (10) days after the due date for a reply brief.
7. Some practitioners believe that an oral hearing is mandatory in an ex parte appeal to the TTAB. However, an oral hearing is not a mandatory procedure. Further, the TTAB noted that an oral hearing is only helpful if the goods or services at issue are technical or unfamiliar, or where an issue on appeal is not clearly defined. By avoiding an unnecessary oral hearing, practitioners can be more cost-sensitive in TTAB proceedings.