A Q&A with former USPTO trademark examiner/current owner of EverythingTrademarks.com, Roberto Ledesma

Posted by Charles Colman

Yesterday, LAW OF FASHION had the privilege of chatting with attorney Roberto Ledesma of EverythingTrademarks.com.  Roberto was kind enough to share some insight -- not legal advice, of course! -- on the trademark application and prosecution process, acquired over his many years working in the field.  (Note: hyperlinks added by LOF.)


Could you summarize your professional experience?


I began my legal career at the USPTO, where I was a Trademark Examining Attorney for nearly two years.  I have spent the past six years in private practice in New York City.  During this period of roughly eight years, I've handled thousands of trademark applications.


When you were a trademark examiner, what were some of the most common problems you saw in applications?


The most common problem with applications is the description of goods and services.  The USPTO requires applicants to be very specific and definite about the nature of the products/services for which protection is sought.  As you know, one cannot just identify "clothing" in a registration, but must instead specify each and every item of clothing used in connection with the mark (e.g., pants, shirts, socks, etc.)  The challenge is in crafting a description that not only accurately identifies the applicant's goods/services, but is also acceptable to the USPTO.  Most countries and jurisdictions around the world do not require the same level of specificity as the USPTO.  (To use the same example, "clothing," on its own, would be an acceptable description in most jurisdictions.)  This can create major identification-related problems with U.S. applications that are based on foreign filings or extensions of international registrations.


While working as a trademark examiner, did you have any "pet peeves" that you think are common among examiners, of which applicants should be mindful?


Poorly worded identification of goods/services -- specifically, overly broad and overly inclusive identifications.  Sometimes it is necessary to be broad, especially with intent-to-use applications, but it is important to be broad within reason.  You always want to seek protection for core products/services and not simply include a laundry list of items that may never be used in the U.S.  Employing the latter technique could broaden the pool of potential challenges during prosecution and make the application vulnerable to cancellation if the applicant cannot demonstrate use or a bona fide intent to use.


What effect, if any, does the so-called "point system" have on trademark examiners' processing of applications?


On a substantive level, it should have no effect.  In my view, it is simply a form of quality control.  The USPTO is the best at what they do.  Part of the quality is moving matters along and guarding against a backlog.  So the "point system" helps to move applications forward without (hopefully) compromising quality.


What, if anything, surprised you about the transition from examiner to prosecuting attorney?


I was surprised by how confusing it can be to use the USPTO website and its online filing system.  While I think the process works great and overall the online system is excellent, it is not easy for an unrepresented applicant to navigate.  This underscores the importance of having a professional handle the filing, to ensure it is done properly the first time.


In your view, do fashion-related trademark applications consistently present any unique, interesting, or difficult issues?


Fashion-related trademark applications are interesting because they can cover a number of different types of goods like clothing, bags, cosmetics, etc., which fall within different International Classes.  I think fashion brands, in particular, need to be mindful about how a trademark is used on the product.  To illustrate, clothing-related trademark applications are often refused on the basis of "mere ornamental use" of a mark, meaning the mark isn't being used as an indicator of origin, but rather as a decorative feature. A mark has to be used in an acceptable trademark manner; otherwise, the USPTO will reject the filing.

Acceptable uses include placing the mark on a label inside the collar, or on a hang-tag affixed to the clothing.  It is also acceptable to use the mark on the clothing item itself, provided the use is non-ornamental.  An example would be to have the mark appear in the breast-pocket area of a shirt, like the Ralph Lauren "horseman" logo or the Lacoste alligator design.  These are proper trademark uses, as opposed to marks placed across the front of a shirt as a design element; in most instances, specimens of the latter variety will be rejected as showing a merely ornamental use.


Have you observed any trends in fashion-related trademark applications and/or prosecution over the past few years?


Specifically with respect to the fashion industry, I think you see examiners and the TTAB recognizing that a fashion brand can touch on a number of different areas­: clothing, bags, cosmetics, etc.  It is increasingly common to find perfume labels, clothing labels, luggage, jewelry, etc., all offered under a single mark.  So it is important, when clearing potential trademarks, to look at all of the possible International Classes and goods/services that could fall within the fashion industry, and not focus solely on the specific class that will be the subject of the application.

Thank you for taking the time to share your insight with the readers of LAW OF FASHION!


My pleasure.

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to this writer, his law firm, its agents, or its clients. Neither LAW OF FASHION nor any person or entity associated with it can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]