How Will a Trademark Examiner Examine My Trademark Application?
So what do trademark examiners actually do when they get your trademark application?
If you found this video useful, subscribe to our YouTube channel. We post new content all the time!
If you have a brand you want to protect, let's get on a quick call to discuss your trademarking strategy.
How Will a Trademark Examiner Examine My Trademark Application?
When you file your trademark application, the first thing that’s going to happen with it is... nothing. It’s just going to sit there for several months. It’s about 8 months in Canada and 4 months in the U.S.
And then it will get assigned to a trademark examiner. Basically it is someone at the Trademarks Office who is called a trademark examiner. Your application will be assigned to them, they will look at it. And they will look at it through the prism of their level of knowledge of trademark law—and it varies: some of them are really good, some of them, unfortunately, are not.
They’re also going to look at your trademark application through the prism of their level of understanding of your industry. If you have a common industry like clothing, it’s all clear. But if you have something that is very sophisticated sometimes it’s very important who the application is going to get to, because some examiners will understand what makes you different from your competition and some of them won’t. And this is actually very important.
I am going to tell you a story. We had a client; we filed 5 trademarks for them. The trademark applications were almost identical, the only difference was the trademarks themselves were different. And it so happens that 3 of these applications ended up on the desk of one trademark examiner, and two of them ended up on the desk of another. And our client was in the telecommunications services field. So the first examiner, the one who got the 3 applications, they were very happy with everything, they approved the applications right away, no problems, no questions asked. The second examiner was giving us hell.
The trademarks were ok, it was the list of products and services that they were not happy with. They said it wasn’t not specific enough. And the phrase that they were particularly annoyed by was, “transmission of data over the Internet.”
And the examiner goes, “What kind of data?”
We’re like, “Any data!”
They go, “No, no it’s not specific enough.”
So we changed that to “transmission of images, text, video, multimedia and other content over the Internet.”
Several months later, we get another office action from the same examiner saying that it was still not specific enough. “What is the text about? What are the videos about?”
I was like, “Are you kidding me? Why are you asking us all these questions? It does not make any sense! The other examiner who saw exactly the same thing was ok with that.”
And the trademark examiner said, “I don’t care what the other examiner said, I don’t understand what the text is about. And you need to specify that.”
So we actually realized that we can’t argue with that person, because it was a completely unreasonable request. So what we did is we wrote a letter to the Trademarks Office and asked, almost begged, for the 2 trademark applications to be sent to the same examiner who just approved 3 other applications. And we were lucky enough that we had more than one, and so they agreed, and those applications were approved, and the client’s trademarks are now registered.
This only shows how important it is for the trademark examiner to understand what your industry is. Because if the examiner has no idea what transmission of data over the internet is, they may also not know anything about your product or service. So it is very subjective.
And the other thing is, I said there are three things that a trademark examiner brings with them to the examination process. So it is knowledge of law, knowledge of your industry, and the third one is just basically their personality. Some of them are really nice and try to be really helpful, they’re going to help you every step of the way, they’re going to suggest things how to make this work. And some of them are just being stubborn jerks, for lack of a better term. Sometimes we just get into these unreasonable arguments that do not make any sense, we can spend hours and hours and hours of time trying to convince them, and show them a common-sense approach, and it still does not work.
So there is a lot of subjectivity, that’s why there is never 100% certainty as to whether your trademark is going to go through.
If we think that the likelihood of objections is relatively low, we’re still going to offer you 100% money back guarantee. But it does not mean that we’re 100% certain that the trademark examiner on the other side is going approve that.
So that was the first part of the answer. The second part of the answer is, these are the two things that they are going to look at in your trademark application. First of all, they’re going to look at whether your trademark application meets formal requirements. Does the application have all the proper fields filled out, is the trademark not descriptive, is the list of products and services specific enough, all of those things that pertain just to your trademark in vacuum, as if there were no other trademarks there at all. That’s the first part, the formalities.
The second part of what they’re going to look at is whether or not your trademark is confusingly similar with any other previously filed and registered trademarks. And again, there is a lot of subjectivity that goes in there. Because when they are comparing your trademark with somebody else’s trademark, they need to understand what the industry is like. They need to understand whether somebody who is a gamer, for example, let’s say we have a brand name for a software gaming company and let’s say that name is confusingly similar with another name of a company that makes software that’s only used in the healthcare industry. How likely is that for somebody who is just a gamer that they would know about and confuse this brand for the brand of the healthcare company’s brand? And that depends on how well the trademark examiner understands both industries.
So there is a lot of subjectivity on both sides of it.
So to wrap this up they will look at 2 things: are formalities in order and are there any other trademarks previously filed or registered that would not allow them to approve your mark. If the road is clear, they will approve it.
And that’s really what our job is, to communicate with them. Well, the first step of our job is to attempt to draft your application so that they say, “Yes, it’s a perfect application, we are happy, we approve it right away.”
Unfortunately, it doesn’t happen very often. Not because we don’t know what we’re doing, we’ve filed hundreds and hundreds of trademarks, I have people who work for me, who have filed thousands and thousands of trademarks. So we do know what we’re doing, it’s just that there’s this level of subjectivity.
So the first thing we do is we try to file a trademark so that it goes through and gets approved right away. And if it doesn’t, then our job is to keep at it, and argue with them, and fix the application, and tweak the application, and do all those things to make sure that the brand that you entrusted us with gets registered, and that you have something that you could hang on your wall in a frame and say, “This brand is mine!”
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.
See our answers to other frequently asked questions about trademarks or leave your comments below!
comments powered by Disqus
- Does My Trademark Need to Match My Company Name? ()
- What Is a Trademark? ()
- Can I Add More Products and Services to My Trademark Application After It Has Been Filed? ()
- Where Should I Register My Trademarks? (Deciding on Jurisdictions in Which to File Trademarks) ()
- What Is Conventional Priority? ()
- Can I Change the Trademark Itself After My Trademark Application has been Filed? ()
- How Long Does It Take to Register a Trademark? ()
- Can I Trademark Dictionary Words? ()
- Can I Trademark the Same Brand for Different Products or Services? ()
- Do All Countries Protect Unregistered Trademarks? (Common-Law Trademarks) ()
- Can I Trademark a Brand Before It Is Launched? (Intent-to-Use Trademarks) ()
- Is My Trademark Available? ()
- Should I Trademark My Startup's Brand? ()
- In Whose Name Should I Apply For My Trademark? ()
- Will the Trademarks Office Help Me Enforce My Trademarks? ()
- Should I Trademark a Logo Done On Fiverr? ()
- How Much Does It Cost to Register a Trademark? ()
- Should I Trademark My #Hashtags? ()
- Are There Annual Trademark Maintenance Fees? ()
- If I Register My Trademark, Does It Mean No One Can Use It? ()
- Four Things Most Commonly Trademarked (The Trademark Dance) ()
- How Does Trademark Factory's Guarantee Work? ()
- What Are Nice Classes of Goods and Services ()
- Do I Have to Be an American Resident to File in the U.S.? ()
- How Are Service Marks Different From Trademarks? ()
- What Are Oppositions? ()
- 3 Most Important Benefits of Registering Trademarks ()
- Why Register a Trademark in Canada to Get a .CA Domain Name? ()
- What is Post-Allowance Statement / Declaration of Use? ()
- Am I Protected Between the Filing and the Registration of My Trademark? ()
- What Is Post-Registration Statement of Use? ()
- How to Use Trademarks to Create a Sense of Uniqueness for Your Business? ()
- What Goes Into a Trademark Application? ()
- What Happens If You Don't Respond to Correspondence from Trademarks Office in Time? ()
- What Makes a Brand Valuable? ()
- Is Registering a .COM Domain Name Enough to Secure Trademark Rights? ()
- Why Is It Important to Preserve Evidence of Use of My Trademarks? ()
- Do I Need an Agreement with My Logo Designer? ()
- Andrei Mincov's story ()
- What is Madrid Protocol? ()
- Trademark Factory Ultimate package ()
- What Are Official Marks in Canada? ()
- Trademark Factory I Feel Lucky package ()
- Can You Trademark Book Titles? ()
- Trademark Factory All-Inclusive package ()
- Trademarks vs. Trade Names ()
- Look-Alike and Sound-Alike Trademarks ()
- Will the Trademark Examiner Check Other Applied For Trademarks? ()
- Trademarking Words in a Fancy Font? ()
- Will the Trademark Examiner Check Unregistered Trademarks? ()
- You Received an Office Action. Now What? ()
- How Long Is a Trademark Registration Good For? ()
- When Should I Trademark My Brand? ()
- Why is Google the Textbook Example of What Not to Do with Your Trademark? ()
- Should I Claim Color as a Feature of My Trademark ? ()
- What Is the Difference Between Trademarks and Patents? ()
- How Should I List Products and Services in My Trademark Application? ()
- What Is the Difference Between Trademarks and Copyright? ()
- When Should I Trademark My Logo? ()
- What Are the Two Main Reasons My Trademark Application Can Be Rejected? ()
- What Is the Trademarking Process? ()
- Can I Mention Someone Else's Trademark on My Website? ()
- What Is An Acceptable Specimen of Use? ()
- What Are Generic, Descriptive, Suggestive, Arbitrary, and Fanciful Trademarks? ()
- What Is UDRP Uniform Domain Name Resolution Policy? ()
- How Do I Trademark Product Names? ()
- When Am I Allowed to Put TM Next To My Brand? ()
- How Do I Trademark Service Names? ()
- What Are Word Marks, Design Marks, and Combined Marks? ()
- What Should I Know About Trademarking Slogans and Taglines? ()
- Should I Trademark My Name Or My Logo ()
- Adding Elements to My Trademark to Overcome Confusion or Descriptiveness ()
- Are Famous Trademarks Treated Differently From Regular Trademarks ()
- Received an Invoice For International Publication of Trademark ()
- What Should I Do If Somebody Infringes on My Trademark ()
- Do Trademarks Protect Their Foreign Equivalents ()
- What Should I Do If Somebody Accuses Me of Infringing Their Trademark? ()
- Asian Domain Name Scam ()
- What Are Two Biggest Branding Mistakes? ()
- Are Dead Trademarks a Problem? ()
- What Is The Difference Between a TM and an R in a Circle Symbols ()
- What Does Using a Trademark Mean? ()
- How Do I Choose a Great Brand for my Business, Product, or Service ? ()
- What Is Weekly Confusion Watch Service? ()
- Supplemental Register ()
- What Are Ornamental Trademarks? ()
- What Happens If I Don't Renew My Trademark In Time? ()
- What Does Confusingly Similar Mean? ()
- What Is a Trademark Assignment Agreement? ()
- What Does Date of First Use Mean? ()
- What Is a License Agreement? ()
- Why Is Search So Important? ()
- What Are Incontestable Trademarks? ()
- How Do I Check the Current Status of my Trademark Application? ()
- Important Amendments to Canada's Trademark Law ()
- How To Trademark a Name and Logo ()
- Trademarking Strategies For Life And Business Coaches ()
- How Do I Cancel Someone Else's Trademarks? ()
- Why Do Celebrities Trademark Their Catchphrases? ()
- How George Clooney Made $1 Billion Using Trademarks? ()
- Misspellings and Other Changes to Get Around Someone Else's Trademark ()
- How To Protect Your Brand On Amazon? ()
- Dividing a USPTO Trademark Application ()
- 5 Movies with Unbelievable Scenes about Trademarks and Intellectual Property ()
- Trademark Factory's New & Improved I Feel Lucky Package ()
- The Dumbest Advice About Trademarks You Could Ever Give ()
- 5 Things You Should Never Say About Your Brand ()
- Trademarks vs Domain Names ()
- What's Your Brand Worth? ()
- 3 Y's Of Protecting Your Brand ()
- Matrix of Success 2 Things a Business Needs for Success ()
- How Coca Cola Trademarked Their Brand ()
- Trademarks: Certainty vs. Commitment ()
- Trademarking Process In a Nutshell - TMs Into Rs Brand Protection Formula ()
- Can I Trademark An App ()
- 3 Types Of Businesses And What This Has To Do With Trademarks ()
- Incorporation vs Trademarking ()
- 3 Nasty Trademark Rip Offs And How To Avoid Them ()
- Do I Need To Have A Logo To Get A Trademark ()
- The Real Price You Pay For Trademarking ()