Examining Attorney (Trademarks)

An examining attorney is a licensed attorney employed by the U.S. Patent and Trademark Office (USPTO) who reviews trademark applications to determine whether a mark qualifies for federal registration. Every application filed with the USPTO is assigned to an examining attorney before registration can proceed. Examining attorneys are neutral government reviewers; they apply federal trademark law and USPTO rules, not personal judgment, and have no obligation to help an applicant succeed.

How the review works

After filing, an application enters a queue and is typically assigned to an examining attorney within five to six months. The examiner then conducts a substantive review that includes:

• Searching for conflicting marks. The examiner searches the USPTO database for registered or pending marks that are similar in appearance, sound, or meaning and cover related goods or services.
• Reviewing the application for legal sufficiency. The examiner checks whether the mark is distinctive, whether the specimen demonstrates use in commerce, whether the correct trademark classes are identified, and whether all formal requirements are met.
• Issuing an office action or approving the mark. If problems exist, the examiner issues an office action explaining the refusal or required corrections. If the application is in order, the examiner approves it for publication in the Official Gazette.

The applicant has three months to respond to an office action, with one extension available for an additional fee.

Common refusals

• Likelihood of confusion. The examiner finds a registered mark similar to the applicant's mark that covers related goods or services. This is the most common reason for refusing registration.
• Descriptiveness. The mark merely describes a feature or characteristic of the goods or services rather than functioning as a distinctive identifier.
• Specimen rejection. The submitted specimen does not adequately demonstrate use in commerce. A trademark specimen must show the mark as consumers actually encounter it.
• Identification of goods/services issues. The description of goods or services is too vague or broad and requires clarification.

Examining attorney vs. applicant's trademark attorney

These roles are frequently confused. The examining attorney works for the USPTO and reviews the application on behalf of the federal government. An applicant's trademark attorney, a private attorney retained by the applicant, prepares, files, and advocates for the application. The applicant's attorney communicates with the examining attorney on the applicant's behalf and responds to office actions.

Key limitation

Examiner approval does not guarantee registration. After approval, the mark is published in the Official Gazette, giving third parties 30 days to file an opposition. Registration issues only if no successful opposition is filed.

Related terms

• Trademark search: A pre-filing search that helps identify potential conflicts before the examining attorney does.
• Trademark specimen: The evidence of use the examining attorney reviews to confirm a mark is in commerce.
• Intent-to-use trademark application: A filing basis for marks not yet in use, reviewed under a different standard.
• Use in commerce: A foundational requirement the examining attorney evaluates when assessing an application.
• Common law trademark: Rights that exist outside the federal registration system and are not subject to USPTO examination.

FAQs about an examining attorney

Is a USPTO examining attorney the same as a trademark examiner?

The titles refer to the same role. USPTO trademark reviewers are licensed attorneys, which is why the agency uses "examining attorney" rather than "examiner." Patent examiners, by contrast, are not required to hold a law degree.

Can an applicant contact the examining attorney directly?

Yes. Examining attorneys communicate with applicants or their attorneys by phone and email. Applicants represented by a private attorney, however, must conduct that communication through their attorney.

What happens if an applicant ignores an office action?

Failure to respond within the three-month period results in the application going abandoned. The applicant loses the filing date and must start over. Revival is possible in limited circumstances but requires a petition and is not guaranteed.