When I was researching summer internship opportunities, several positions caught my eye. With my science background and experience in nuclear engineering, an internship with the Department of Energy in the Office of the Assistant General Counsel for Technology Transfer and Intellectual Property (DOE) was a perfect choice.
As a 1L, I had very few opportunities to study Intellectual Property (IP). It was only through several lectures in the Foundations of Business Law course in the Spring of my 1L year that I was formally introduced to IP law, but my internship with the DOE certainly got me up to speed.
At DOE I was quickly familiarized with trademarks. I was taught how to search the Trademark Official Gazette, a weekly publication put out by the U.S. Patent and Trademark Office (USPTO) displaying all of the marks that were approved for registration. Marks in the Gazette are published for one month before they are officially registered with the USPTO. This allows anyone to search the Gazette for any marks they wish to oppose. This search immediately became a part of my weekly routine, as the DOE has federal registrations for over 200 combination and word marks.
I quickly learned about the thriving foreign market aiming to register as many marks as possible with the USPTO. Even my untrained eye could tell that many of these foreign marks lacked credibility. My supervisors and colleagues at DOE referred to these as “filing mills,” and they are becoming a problem in the USPTO. These marks are almost always word marks consisting of an illogical string of letters or obvious variants of an existing mark which one might assume is an acronym for a larger name. Such marks substantially clog the USPTO’s trademark registration system and cause a headache to those who rightfully own marks that are substantially similar to these suspect marks.
The process to register a mark proved to be a learning experience in trademark subtlety. I was assigned to draft a response to an office action for a trademark application that was rejected on the grounds that it included an inadequate description and specimen for one particular International Class of goods and services. After further research, it was determined we should makes changes to the application. This turned out to be a good exercise in what constitutes “use in commerce.” A simple webpage displaying the mark may work, but often, without more, will not. What is better is a webpage that shows a sample of the goods with the mark on them.
After finishing my draft response, I received yet another lesson in the subtle “tennis match” of trademark prosecution. In my response to the USPTO, I wrote that our specimen was rejected for being “inadequate.” My supervising attorney quickly corrected the language and changed it to “described as inadequate.” He explained that an applicant stating on the record that an application is inadequate is usually not the best response. Instead, simply stating that the USPTO was not satisfied with our specimen could make a world of difference if there was ever any litigation involving this mark.
My foray into the world of patent prosecution was equally as eye opening. I had the opportunity to help with several interesting projects, such as a new mechanism to help train nuclear power plant technicians to detect radiation, and a device to more safely disarm pipe bombs. I found that being able to understand a complex invention and boil it down into several simple “claims” takes practice and patience, as I learned while listening in on a discussion with a USPTO examiner.
In an office action, the examiner rejected a few of the patent application claims for allegedly being “obvious” (a seemingly harsh term to describe an invention that took years to develop). However, my supervising attorney explained that sometimes a simple phone conversation with the examiner is often a quick and efficient way of addressing the examiner’s concerns. By agreeing on how a claim should be described, the application could be amended and placed in condition for allowance. I learned a lot from simply interacting and listening with DOE’s patent attorneys as they talked with USPTO attorneys and agents.
For anyone interested in intellectual property, a summer spent at DOE’s Office of the Assistant General Counsel for Technology Transfer and Intellectual Property is time well spent. While reading textbooks and attending lectures is certainly helpful for learning the law, nothing beats the first-hand experience of drafting memos and office actions and speaking with clients and other attorneys. I am confident that the skills I learned this summer will stay with me and serve me well as I pursue my own career in IP litigation.