Getting Your Trademark by Satisfying PTO Attorney Interests
We talk a lot here at IP ADR about ascertaining and fulfilling party interests to help you settle your patent, trademark, copyright or trade name and trade dress litigation. As Entrepreneurship Magazine recently reported in getting into the mind of your negotiating counterpart, knowing your negotiating partner's desires, aims, goals, needs and fears (its interests) will go a long way to getting you the best deal available.
Getting a solid grasp on the other party's interests will help you:
* Determine what you have or can do that might be of value to them, which can make it easier to figure out how best to get what you want;
* Craft deals that acceptably satisfy the other party's interests, which will increase the likelihood that the deal will be sustainable (since the other party will be motivated by their own self-interest to successfully implement the deal);
* Uncover potential sources of value that might otherwise have been missed, which will increase your ability to invent creative, value-maximizing solutions.
Now, thanks to Las Vegas Trademark Attorney's recent post welcoming Michael Hall to the Trademark Blogosphere [Registration Ruminations]we learn how to Help[] Yourself by Helping Examining Attorneys. In other words, by satisfying examining attorneys' "earned point" interests.
Back in December 1997, Fordham University School of Law hosted a discussion at which Judge Quinn of the TTAB and other panelists spoke about PTO practice. Richard Friedman, a former examining attorney who had moved on to the NBA (as counsel, not a player!) explained how it works:
[I]f an examining attorney pulls an application that is in perfect order and can be passed right to publication, that is two points for the attorney. The examining attorneys love that. They are already thinking ahead to their bonus at the end of the year when they do something like that.
So your job should be to concentrate on making an application two-points perfect. . . .
Let’s say some kind of substantive refusal area comes up, but it is a gray area — not the easy section 2(d) case or the easy descriptiveness refusal. Let’s say the examining attorney pulls an application that is in a gray area, but everything else is okay. The examining attorney is apt to say, “All right, I am going to take my chance and not send the refusal so I can get those two points for that first-action publication.”
If, however, there are other things wrong in the application papers, little stuff, and they are going to have to send you a letter anyway, then they might as well put in the substantive refusal to cover themselves. That is the way things work, whether we on the outside like it or not.
Discussion, Trademark Prosecution in the Patent and Trademark Office and Litigation in the Trademark Trial and Appeal Board, 8 Fordham Intell. Prop. Media & Ent. L.J. 451, 461 (Winter 1998).
In 2005, The Trademark Reporter published an article on the registration of product configuration trade dress with respect to three product types. For one, the authors specifically observed:
To the extent one central theme existed, those who submitted their evidence of acquired distinctiveness at the time of filing the application, or before USPTO examination, appeared to avoid any challenges to the sufficiency of the evidence provided.
Karen Feisthamel, Amy Kelly, & Johanna Sistek, Trade Dress 101: Best Practices for the Registration of Product Configuration Trade Dress With the USPTO, 95 Trademark Rep. 1374, 1383 (November - December 2005).
This particular study involved a narrow field, but the authors’ observation makes perfect sense if you’re looking at it from an examining attorney’s perspective. As Richard Friedman said, “The way to make your life easier when prosecuting trademarks at the PTO is to make the examining attorneys’ lives easier.” Needless to say, following this strategy does not remotely guarantee that you won’t receive a refusal, and obviously there will sometimes be good reason to file an application that you know will result in an office action. However, it puts you in a position where the examining attorney might be inclined to resolve a close question in your favor.
