How Will a Trademark Examiner Examine My Trademark Application?

So what do trademark examiners actually do when they get your trademark application?

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TRANSCRIPT

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!”


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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.

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