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 (Board) in cancellation and similar proceedings authorized by law.
Members of the Trademark Examining Operation are cautioned to be especially wary of inquiries from persons outside the USPTO, including employees 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 Board must speak for itself.
Employees must not discuss these matters with members of the public. Qualified U.S. attorneys should not make improper inquiries of members of the Trademark Examining Operation.
See TMEP §1806 regarding contacts with third parties about ex parte matters.
37 C.F.R. Part 104.
Subpart A--General Provisions
Demand means a request, order, or subpoena for testimony or documents for use in a legal proceeding.
Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office ( see §1.9(j)).
Document means any record, paper, and other property held by the Office, including without limitation, official letters, telegrams, memoranda, reports, studies, calendar and diary entries, maps, graphs, pamphlets, notes, charts, tabulations, analyses, statistical or informational accumulations, any kind of summaries of meetings and conversations, film impressions, magnetic tapes, and sound or mechanical reproductions.
Employee means any current or former officer or employee of the Office.
Legal proceeding means any pretrial, trial, and posttrial stages of existing or reasonably anticipated judicial or administrative actions, hearings, investigations, or similar proceedings before courts, commissions, boards or other tribunals, foreign or domestic. This phrase includes all phases of discovery as well as responses to formal or informal requests by attorneys or others involved in legal proceedings.
Office means the United States Patent and Trademark Office, including any operating unit in the United States Patent and Trademark Office, and its predecessors, the Patent Office and the Patent and Trademark Office.
Official business means the authorized business of the Office.
General Counsel means the General Counsel of the Office.
Testimony means a statement in any form, including personal appearances before a court or other legal tribunal, interviews, depositions, telephonic, televised, or videotaped statements or any responses given during discovery or similar proceedings, which response would involve more than the production of documents, including a declaration under 35 U.S.C. §25 or 28 U.S.C. §1746.
United States means the Federal Government, its departments and agencies, individuals acting on behalf of the Federal Government, and parties to the extent they are represented by the United States.
In extraordinary situations, when the interest of justice requires, the General Counsel may waive or suspend the rules of this part, sua sponte or on petition of an interested party to the Director, subject to such requirements as the General Counsel may impose. Any petition must be accompanied by a petition fee of $130.00.
Nothing in this part waives or limits any requirement under the Federal Rules of Civil or Criminal Procedure.
Subpart B--Service of Process
Subpart C--Employee Testimony and Production of Documents in Legal Proceedings
Demands in legal proceedings for the production of records, or for the testimony of employees regarding information protected by the confidentiality provisions of the Patent Act (35 U.S.C. 122), the Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or any other confidentiality statute, must satisfy the requirements for disclosure set forth in those statutes and associated rules before the records may be provided or testimony given.
Subpart D--Employee Indemnification
The procedure in this subpart shall be followed if a civil action or proceeding is brought, in any court, against an employee (including the employee’s estate) for personal injury, loss of property, or death, resulting from the employee’s activities while acting within the scope of the employee’s office or employment. When the employee is incapacitated or deceased, actions required of an employee should be performed by the employee’s executor, administrator, or comparable legal representative.
Subpart E--Tort Claims
Administrative claims against the Office filed pursuant to the administrative claims provision of the Federal Tort Claims Act (28 U.S.C. 2672) and the corresponding Department of Justice regulations (28 CFR Part 14) shall be filed with the General Counsel as indicated in §104.2.
Only a decision of the Director or the General Counsel regarding settlement or denial of any claim under this subpart may be considered final for the purpose of judicial review.
It is the policy of the USPTO that its employees, including trademark examining attorneys, will not appear as witnesses or give testimony in legal proceedings, except under the conditions specified in 37 C.F.R. Part 104. Any employee who testifies contrary to this policy will be dismissed or removed.
Whenever an employee of the USPTO, including a trademark examining attorney, is asked to testify or receives a subpoena, the employee shall immediately notify the Office of the General Counsel. Inquiries requesting testimony should also be referred immediately to the Office of the General Counsel.
Trademark examining attorneys and other USPTO employees who perform or assist in the performance of quasi-judicial functions, are forbidden to testify as experts or to express opinions as to the validity of any registration.
Any individual desiring the testimony of an employee of the USPTO, including the testimony of a trademark examining attorney or other quasi-judicial employee, must comply with the provisions of 37 C.F.R. Part 104.
A request for testimony of an employee of the USPTO should be made to the Office of the General Counsel at least ten working days prior to the date of the expected testimony.
If an employee is authorized to testify, the employee will be limited to testifying about facts within the employee’s personal knowledge. Employees are prohibited from giving expert or opinion testimony. Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). Likewise, employees are prohibited from answering hypothetical or speculative questions. Shaffer Tool Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should be limited to matters of fact and must not go into hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or conclusions of the examiner); In re Mayewsky, 162 USPQ 86, 89 (E.D. Va. 1969) (deposition of an examiner must be restricted to relevant matters of fact and must avoid any hypothetical or speculative questions or conclusions). Employees will not be permitted to give testimony with respect to subject matter that is privileged. Several court decisions limit testimony with respect to quasi-judicial functions performed by employees. U.S. v. Morgan, 313 U.S. 409, 422 (1941) (improper to inquire into mental processes of quasi-judicial officer or to examine the manner and extent to which the officer considered an administrative record); W. Elec. Co. v. Piezo Tech., Inc., 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir. 1988) (patent examiner may not be compelled to answer questions that probe the examiner’s technical knowledge of the subject matter of a patent); In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or scientific qualifications of examiners-in-chief are not legally relevant in appeal under 35 U.S.C. §134 since board members need not be skilled in the art to render obviousness decision); McCulloch Gas Processing Co. v. Dep't of Energy, 650 F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of individuals performing governmental functions not permitted); Lange v. Comm'r, 352 F. Supp. 116, 176 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief not relevant in Section 145 action).
In view of the discussion above, if an employee is authorized to testify in connection with the employee’s involvement or assistance in a quasi-judicial proceeding that took place before the USPTO, the employee will not be permitted to give testimony in response to questions that seek:
Any request for testimony addressed or delivered to the Office of the General Counsel must comply with 37 C.F.R. §104.22(c). All requests must be in writing. The need for a subpoena may be obviated where the request complies with 37 C.F.R. §104.22(c) only if the party requesting the testimony meets the following conditions:
Absent a written agreement meeting the conditions specified in paragraphs (1) through (5), a party must comply with the specific terms of 37 C.F.R. §104.22(c), and the USPTO will not permit a deposition without issuance of a subpoena.
See Service of Process & Testimony of Employees of the Patent & Trademark Office & Production of Documents in Legal Proceedings, 1099 TMOG 44 (Feb. 28, 1989).
Correspondence and inquiries from the White House, members of the U.S. Congress, embassies, and heads of U.S. executive departments and agencies normally are cleared by the USPTO’s Office of Policy and International Affairs and/or the Office of Governmental Affairs.
Inquiries referred to in this section such as correspondence from foreign embassies, the Office of the U.S. Trade Representative, and the U.S. Department of State must immediately be transmitted to the USPTO's Office of the Administrator for Policy and International Affairs, and a staff member of that office must be notified by phone that such correspondence has been received at 571-272-9300. Inquiries referred to in this section, such as correspondence from the U.S. Congress or the White House, must immediately be transmitted to the USPTO's Director of the Office of Governmental Affairs, and a staff member of that office must be notified by phone that such correspondence has been received at 571-272-7300.
This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the U.S. Department of Commerce is attained.
Freedom of Information Act (FOIA) requests may be submitted by mail, email, or hand delivered to the attention of the USPTO FOIA Officer at one of the following addresses:
By mail:
USPTO FOIA Officer
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria
Virginia
22313-1450By email:
By hand:
USPTO FOIA Officer
U.S. Patent and Trademark Office
Madison East Building
600 Dulany Street
Alexandria
Virginia
22314The request must be made in writing. No telephone requests will be accepted.
An email request must state that the request is made pursuant to FOIA and describe the records sought. Failure to do so may result in an email not being properly identified as a FOIA request. Email submissions not considered FOIA requests may be disregarded. The email must also include the requestor’s mailing address as not all USPTO records are reasonably available in a format suitable for emailing. Failure to provide a mailing address could result in a delay in processing the request.
Copies of the USPTO's final agency decisions and most frequently requested FOIA documents are available on the USPTO website at https://www.uspto.gov.
Inquiries from members of the press should be directed to the USPTO's Office of the Chief Communications Officer at (571) 272-8400.
For general questions about the procedures for obtaining and maintaining a registration, callers may telephone the Trademark Assistance Center (TAC) at (571) 272-9250 or (800) 786-9199, or email TAC at TrademarkAsistanceCenter@uspto.gov. See TMEP §108.02 for more information regarding TAC and its operating hours.
However, USPTO employees may not:
For a legal opinion about a trademark matter, a party must consult a private U.S.-licensed trademark attorney. The USPTO cannot aid in the selection of an attorney. 37 C.F.R. §2.11(a). To find the names of private attorneys who are licensed to practice law in the U.S. and handle trademark matters, consult telephone listings or the internet, or contact the attorney referral service of a U.S. state or local bar association (see the American Bar Association’s Consumers’ Guide to Legal Help). Information about selecting a U.S.-licensed trademark attorney is also available on the USPTO website.
See TMEP §104 regarding trademark search systems.
See TMEP §1806 regarding contacts with third parties about ex parte matters.
An examining attorney or other USPTO employee may not discuss the merits of any particular application or registration with a third party. If a third party attempts to contact an examining attorney about an ex parte matter, either orally or in writing, the examining attorney should refer the third party to the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §§1715 et seq. regarding letters of protest.
The USPTO's website at https://www.uspto.gov provides access to a wide variety of information about trademarks and the systems for electronically filing trademark documents. See TMEP §102 for more information regarding what is available on the USPTO website.
