TMEP 1801: Office Personnel May Not Express Opinion on Validity of Registered Trademark

October 2017 Edition of the TMEP

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1801    Office Personnel May Not Express Opinion on Validity of Registered Trademark

A certificate of registration of a mark on the Principal Register is prima facie evidence of the validity of the registration. 15 U.S.C. §1057(b).  Public policy demands that every employee of the United States Patent and Trademark Office ("USPTO") refuse to express to any person any opinion as to the validity of any registered mark, except to the extent necessary to carry out inter partes proceedings at the Trademark Trial and Appeal Board in cancellation and similar proceedings authorized by law.

The question of the validity of a registered mark is otherwise exclusively a matter to be determined by a court.  Members of the Trademark Examining Operation are cautioned to be especially wary of any inquiry from any person outside the USPTO, including an employee of another Government agency, the answer to which might indicate that a particular registration should not have been published or issued.

An employee of the USPTO, particularly a trademark examining attorney who examined an application, should not discuss or answer inquiries from any person outside the USPTO as to whether a certain registration or particular evidence was considered during the examination of the application, or whether a mark would have been published or registered if the registration or other evidence had been considered during the examination.  Likewise, employees should not answer any inquiry concerning any entry in a registration file, including the extent of the field of search.  The record of the file of a registration or inter partes proceeding before the Trademark Trial and Appeal Board must speak for itself.

Employees should refuse to discuss these matters with members of the public, and this refusal should not be considered discourteous.  Practitioners should not make improper inquiries of members of the Trademark Examining Operation.

See TMEP §1806 regarding contacts with third parties about ex parte matters.