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I have just returned this week from International Trademark Association annual conference in Boston. It was a great meeting with informative panels, networking, meeting other trademark attorneys, and meeting with a few clients. One of the most informative portions for me was an early morning breakfast with two Managing Attorneys at the USPTO, Angela B. Wilson and Tomas V. Vlcek. Our breakfast roundtable was called “Tips on Prosecuting a Trademark Application at the USPTO.” Some of the information shared:

  • The average time for a “first action” by the USPTO after the filing of a new trademark application is just under 3 months
  • When an Examining Attorney “opens” a new file, they have 7 days to act on it – but exceptions may be made upon request
  • When an Examining Attorney receives a response to Office Action, they generally have 21 days to act on it
  • There are approximately 380 Examining Attorneys handling trademarks for the USPTO. None have been hired in the last 18 months.
  • To receive the highest performance review marks, an examining attorney must “open” and take action on approximately 960 trademark applications in a year
  • To receive the highest performance review marks, an examining attorney must take action resulting in approval for publication or abandonment of 1060 files in a year
  • The USTPO’s Trademark Quality Review finds that 97% of files are handled appropriately regarding substantive issues.
  • An Examining Attorney Performance Appraisal is based on three things:
    • volume of production
    • quality
    • the “3rd element” – a catchall of many items, including number of actions disposed of by phone or email
  • Approximately 97% of new applications are filed electronically
  • The TMEP was updated last Friday (Sixth Edition, Revision 2)
  • Useful USPTO email address:
    • Suggestions for improving the form and content of the TMEP: tmtmep@uspto.gov
    • Suggest an addition to the I.D. manual: TMIDSUGGEST@uspto.gov
    • Ideas regarding “Trademarks Next Generation” (future computer/internet systems): TMideas@uspto.gov
    • Feedback regarding office action quality: TMFeedback@uspto.gov

The 2 hour breakfast was informative and enjoyable. I encourage the trademark counsel bar and the USPTO to continue communicating with each other – both can learn a lot from each other and improve their performance with more information and perspective from the “other side.”

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