Years ago, my first job after law school was at the USPTO as an examiner who reviewed trademark applications from the inside of the process. The following are some tips that are useful on the outside, but that one learns on the inside.
- You can contact the examiner by phone or email if you have a question or you want to discuss an issue or question. Look up their contact information here: https://portal.uspto.gov/EmployeeSearch/
- Applicant files get assigned to the examiners randomly generally, one exception being if there are other pending applications from the same owner applicant, they may be grouped for consistency.
- Examiners get reviewed and can receive performance bonuses.
- Examiners receive points for certain types of actions, and then they may be eligible to receive bonuses based on exceeding the number of points that are expected.
- Examiners are on the applicant's side in general; it is their job to register a trademark unless there’s a reason not to register it.
- Examiners receive just as many points—if not more—for approving an application as they do for denying one, so they are not out to get applicants.
- Examiner's performance measurements are done quarterly based on the fiscal year, so at the end of each quarter there’s generally an influx in office actions and steps taken by the examiners because they’re trying to meet or exceed their goals for the end of the quarter. At the end of the fiscal year in September, you’ll see a boost those last couple of weeks as they try to close out the year.
- Examiners receive extensive training from the USPTO.
- The vast majority of examiners work remotely all over the country.
- Examiners have supervisors and managing attorneys.
- Examiners are broken out into law offices or units.
- Examiners work on applications covering all goods and services generally.
- Sometimes, a small handful of examiners are appointed to a special issue for consistency.
- Sometimes, a delay in your application process can actually clear the way better for approval.
- Sometimes cutting (limiting the description of goods/services) from an application can help get approval.
- Sometimes, a request to divide can help get a significant portion of an application approved while the other part of an application remains at issue.
- Examiners are generally available for a phone call to discuss issues, and it can be a productive way to try to resolve something.
- Evidence is key. Evidence to support the applicant’s position is the most powerful way to try to convince the examiner to change their mind.
- Be careful of any calls that purport to be from the USPTO or an examiner asking for filing fees over the phone. These are scams. The USPTO does not collect over the phone. More here:
- Examiners search the same database that applicants do.
- In the TSDR file for any application, you can find information about the search that was done by the examiner and how it was built.
- The USPTO does not search outside of their database for conflicts. They’re not going to refuse an application based on a trademark that is being used but has never been filed at the USPTO.
- The TMEP is the resource that examiners use for their rule book, and it’s equally available to us on the outside to use and cite those rules and the cases therein.
- Examiners are bound by the filing dates of applications. If somebody applies second for a trademark, but they were using it first, the USPTO’S hands are tied -- the examiners only look at the order in which applications were filed in terms of whether or not they’re going to issue a refusal.
- Be patient. There are a lot of delays at the USPTO, but the delays are not the fault of the examiners. The delays are not controlled by examiners.
For more about trademark registration and protection, see https://www.erikpelton.com/trademarkive/
