Examining Attorneys review trademark applications at the USPTO to decide whether the applied for trademark meets all the statutory requirements to be registered.
Examining Attorneys, sometimes referred to (incorrectly) as trademark examiners, individually review each trademark application to determine if the trademark can be registered on the United States Patent and Trademark Office principal or supplemental registers, or cannot be registered at all. As the name Examining Attorney implies, all Examining Attorneys are licensed lawyers and are experts when it comes to trademark prosecution practice.
At any given time there are roughly several hundred Examining Attorneys working at the USPTO. Although all Examining Attorneys are trained at the USPTO building in Alexandria, VA, most choose to work from a home office rather than commute and work in the USPTO building because most trademark applications are filed online today.
USPTO Headquarters in Alexandria, VA
About three months after a person or entity files a trademark application, it is assigned to an Examining Attorney for the duration of the application process. The Examining Attorney will review the application to make sure it meets all the statutory requirements set out in Section 2 of the Lanham Act and further refined in the Trademark Manual of Examining Procedure (TMEP) before approving the application for publication. For example, the Examining Attorney will confirm the goods and services identified are in the correct classes, and conduct a search of the USPTO database for any potentially conflicting trademarks that are likely to cause confusion.
Screenshot of a search query in the Trademark Electronic Search System (TESS), a similar searchable database used by Examining Attorneys.
If the Examining Attorney determines the trademark application meets all the statutory requirements for registration, he or she will approve the application for publication. If no third party opposed the application during the three month opposition period, the Examining Attorney will issue a trademark registration to the applicant about three months after the opposition period ends.
When the Examining Attorney determines the trademark application is defective for any reason, she or he will issue an Office Action. Whenever the Examining Attorney issues an Office Action, he or she will include in the Office Action the results of their trademark search, even if no conflicting trademarks were found. Sometimes an appropriate response to an Office Action is to simply call the Examining Attorney to make his or hers suggested change for something like adding a disclaimer. They are nice people so there is no need to be afraid of them! Other times, it is more appropriate to respond in writing, especially for more complex issues such as a likelihood of confusion refusal.
Trademark applicant’s will be emailed (or mailed if they made a paper filing) when they receive an Office Action. The above image is what the emails look like and how Office Actions in the Trademark Status & Document Retrieval (TSDR) system. This Office Action was issued based on a 2(d) refusal, likelihood of confusion.
If an Examining Attorney does not accept a response to his or her Office Actin as solving the given issue, they will issue a Final Office Action. At this point, the trademark applicant can appeal directly to the Trademark Trial and Appeal Board (TTAB) ex parte or appeal after their response to the Final Office Action is rejected by the Examining Attorney.
Do you have any questions about the role of the Examining Attorney in the application process? Feel free to leave a comment below or contact us and we will do our best to answer the question.