Intellectual Property Law

Ruminating Over Trademark Registrations

By Michael Atkins

A colleague passed on a link to a great post about how it pays to think like a PTO examining attorney. When you’re trying to get your client’s trademark registered, that is. Turns out the post was one of the first in a fine new blog called Registration Ruminations, published by former PTO examining attorney and Virginia solo practitioner Michael Hall. 

Michael saw a niche and grabbed it. In his words, “Having sat at both sides of the table, I am keenly aware that there is often a real chasm between the way an examining attorney might view an issue and the way counsel prosecuting an application views it. My goal with this blog is to objectively explore issues that arise in ex parte trademark examination.”

So far, so good. He’s already covered quite a bit of ground, with posts about arguing that part of a cited mark is generic or descriptive (it can be effective); the status of revisions to the Trademark Board Manual of Procedure (the TBMP will be revised this year); and going over an examining attorney’s head (they don’t like it but if you need to do it, at least be respectful). All of this is worthwhile reading for folks who prosecute trademark applications before the PTO.

I’m sure he’s got a bunch of ideas queued up, but I’d like his take on the PTO’s “Consistency Initiative,” aimed at treating similar marks similarly. (See STL post here.) Are people using it? Does it work? Is there a right way and wrong way to get the most out of it?

Welcome aboard, Michael. If you’re coming our way for INTA, I hope to see you at “Meet the Bloggers V.”

Full post as published by Seattle Trademark Lawyer on March 16, 2009 (boomark / email).