The Role of the USPTO

The Role of the USPTO

I want to talk briefly about the role of the U.S. Patent and Trademark Office (USPTO) once you have a registered trademark.

A couple of weeks ago a friend of mine obtained a registered trademark (not through me for which we shall have words). While doing a bit of research, they realized that someone had filed a trademark that was pretty similar to theirs. The Patent and Trademark Office (USPTO) flagged my friend’s and a non-final office action was issued. It got me thinking. I think there is a lot of misunderstanding on what the USPTO will do for you once you have a trademark registered.

When a trademark application is filed it goes through an examination process. An attorney who works for the USPTO searches all registered trademarks to determine whether or not a trademark is permitted to complete the registration process.

What the trademark examining attorney is doing at that point is not policing your trademark. They are simply saying to a new applicant that your trademark is confusingly similar with new applicant’s proposed trademark. The person that filed the application now gets to make an argument and try to show that their trademark should be registered. Sometimes the argument is successful, sometimes is it not. But the examination process is very different than policing your trademark. The USPTO does not care if someone is infringing on your trademark. They only care if registration would create a confusingly trademark for the purposes of registration.

One reason the USPTO is not a trademark policing agency is because the USPTO can only address applications for registration. If a company or trademark owner never registers their trademark with the USPTO and their trademark is similar to your trademark, the USPTO will not know, and more importantly won’t care. The USPTO is not in the business of policing your trademark. Only you can police your trademark.

The trademark database is a public database which can be searched to see if there are pending trademark registrations and applications that may be similar to yours. Many private services of varying quality exist that can help you police your trademark (for a fee, of course). If you are diligent about it and set up the searches correctly, you could do your own policing. Should you find a trademark that infringes on yours and the owner attempts to register the trademark, there are mechanisms you can use to object to new trademark applications before it gets to the opposition stage.

The most important thing I want people to understand is that the USPTO is not in the business of policing your trademark – that is your responsibility. If you would like to discuss ways that we can protect your trademark and police your trademark, that is certainly something that we can do.