Beware the Trademark Echo Chamber: Why Federal Courts Should Not Defer to USPTO Decisions

46 Pages Posted: 16 Mar 2019

See all articles by Deborah R. Gerhardt

Deborah R. Gerhardt

University of North Carolina School of Law

Date Written: 2018


This Article explains why federal courts should not defer to United States Patent and Trademark Office (USPTO) trademark decisions. Under United States trademark law, actual use of a mark on specific goods or services is required to support federal trademark registration. The USPTO processes a tremendous volume of applications to register trademarks. In order to do so expeditiously, trademark examiners use heuristics drawn from past USPTO registration data. While markets continually change, each trademark registration is updated at five or ten-year renewal intervals. Accordingly, much of the data does not reflect current market use. A recent audit established that many federal trademark registrations would be cancelled if their factual foundations were challenged. In stark contrast, courts examine market evidence in evaluating the core trademark issues of use, validity, and availability. Examining the factual context of each mark is especially important because, unlike other forms of intellectual property, trademarks have no fixed duration. They are functions of market use. Over time, trademark rights may shrink, be forfeited or expand and last indefinitely as use and public perceptions change. If courts apply de novo review to Trademark Trial and Appeal Board (TTAB) decisions, they will ensure that a forum remains for trademark decisions to be adjudicated based on facts, instead of shortcuts, and current, not past, understandings. While the USPTO does have significant trademark expertise, it does not have the authority to consider Constitutional limits on trademark protection. As seen in the administrative history of the “SLANTS” mark, the USPTO does not adjudicate whether trademark registration decisions violate constitutional rights. Too much deference to the USPTO could result in a trademark echo chamber where litigants never have the opportunity for a court to examine the entire factual record or consider how trademark decisions impact expressive speech. For all of these reasons, federal courts should review USPTO trademark decisions de novo to preserve the opportunity for adjudication based on genuine fact-finding and an openness to modes of inquiry in addition to trademark law.

Keywords: Trademark; Deference; Administrative Law; Secondary Meaning; USPTO

Suggested Citation

Gerhardt, Deborah R., Beware the Trademark Echo Chamber: Why Federal Courts Should Not Defer to USPTO Decisions (2018). Berkeley Technology Law Journal, Vol. 33, 2018, Available at SSRN:

Deborah R. Gerhardt (Contact Author)

University of North Carolina School of Law ( email )

Van Hecke-Wettach Hall, 160 Ridge Road
CB #3380
Chapel Hill, NC 27599-3380
United States
919-962-7219 (Phone)
919-962-3375 (Fax)


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