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Trademark Response: How do you present argument?

When presenting an argument for trademark purposes such as Likelihood of confusion and descriptive goods/services, how should you open the argument on paper? For instance should you reference sub-title caption, paragraph no., and Serial and/or registration no.? and then present your argument for that particular subject?

Obviously my main objective is to prove to the examining attorney that this trademark should be registered for reasons that will be set forth in the argument. What I am looking for is how to present the argument.

~ New Jersey

Form Follows Function: Be Persuasive

This is a legal proceeding. You must be persuasive: The best form is the persuasive form. The best question is the persuasive question. The best evidence is the persuasive evidence.

The arrangement and form of the argument greatly aids the persuasiveness. Think about it from the Examiner's perspective. Their job is production oriented: grant or deny applications as quickly and correctly as possible. In other words, the Examiner gets a fixed amount of credit, and, seeks to limit the amount of time, on each application. The time spent examining an easy-to-allow trademark application is likely similar to the time spent on an hard-to-examine trademark application. So, present a scannable, understandable argument.

I am fairly certain that Trademark Examiners do not read everything that I write. Likely, they do not have enough time. I present fully-briefed arguments with significant amounts of evidence. When you interview the Examiner or when you listen to their oral argument on appeal, you can gauge their level of preparation. Use your time to minimize their time, and, you will get a better result. You want to format with your best points first. Make it as easy as possible for the Examiner to say yes, from the Examiner's point of view. Do not be needlessly argumentative. Remember, the Examiner is not your adversary. The Examiner is serving a judge-like role.

There are very few requirements for the format of the response (especially if you file electronically, where most format is provided for you). So, focus on structuring the argument and presentation of evidence in the most persuasive way. Consistently use headlines, bold, italic, and typography to add a level of scalability and structure beyond the words you write.

Legal persuasion is both an art and a formula. I strongly recommend a little bit of self-help in legal persuasion. Brian Garner gives good, accessible advice on legal persuasion. Here is an example: "Never write a sentence that you couldn't easily speak." Personally, I read aloud any document that I am going to file, in part, to find awkward sentences that need to be recast.

And remember, everything you say will be used against you

One last point, anything you say to the trademark office will be used against you later. For example, your competition can attack or limit your trademark's scope of protection if you are ever involved in a trademark lawsuit.

This is the reason why people hire trademark lawyers. The trademark lawyers investigate and discover evidence. Trademark lawyers research and find persuasive arguments supported by the evidence.

And, significantly, trademark lawyers predict the efficacy of the argument: will it help more than it hurts, even over the long run. The trademark lawyer will think about how competitors might be able to argue in court latter, by estoppel. For example, competitor might later argue to a federal court: "To obtain the trademark, the trademark owner said 'people will not be confused'; so, the court should decide that there is no confusion." It is fairly persuasive, and, it can limit the enforcement power of your trademark in ways you might not foresee.

How to electronically file a Trademark Argument

To be fair, I would not suggest that you use paper. I would suggest that you respond electronically, because, the electronic filing system will likely prompt you for all of the requirements.

Electronic filing is straight-forward. Simple follow the series of screens. Read carefully. Use the help and explanations. Whenever you are confused, refer to the TMEP (Trademark Manual of Examining Procedure).

There are a few requirements for the response. These requirements are predominately explained in Chapter 300 of the TMEP. If you file electronically, you should review the following procedures:

There are definitely further procedures that will apply to your situation, however, you will need to search to find those applicable to your situation.

Finally, be sure that you file the appropriate response in the appropriate system. The main systems are TEAS, ETAS, and ESTTA. TEAS is the Trademark Electronic Application System, which is generally used for trademark application filings and related communications. ETAS is the Electronic Trademark Assignment System, where you record title documents related to trademarks. ESTTA is the Electronic System for Trademark Trials and Appeals, where appeals, pleadings and other correspondence in trademark proceedings are filed.

Good luck.

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