Responding to Office Actions Regarding Trademark Applications

Ideally, a trademark application sees no office action beyond its affirmation by the USPTO, followed by its registration within the Principal Trademark Register. However, there are often certain considerations that require further attention, generally expressed by the USPTO’s examining attorney responsible for overseeing USPTO responses to a specific trademark application.

Office actions from the USPTO refusing registration are not the conclusive end of a trademark application, but merely another step in what might become an extensive process, depending on the relative risk of confusion associated with the proposed mark. There are generally two categories for refusal, though this is not an absolute rule in any way shape or form, and a USPTO examining attorney may reject an application for reasons beyond the scope of the issues described below.

1. Likelihood of Confusion

   1. This is the most significant, and simple, issue an application can face, as the likelihood of confusion with an already existing mark, if not disproven, will generally kill any application intended for federal registration.

      1. The options for a prospective registrant when faced with a refusal due to a likelihood of confusion are generally limited. Either they must disprove the similarity of the marks, and thereby the likelihood of confusion, or the similarity of the products and services offered, as the similarity of marks is only significant when offering goods and services that may eventually be in an “unfair” competition with one another. Otherwise the prospective mark is unfortunately impossible to register due to its untoward similarity to an already protected trademark.

         1. The best manner by which an owner can prevent such refusals is an extensive research stage, in order to determine the relative risk of a mark prior to the application process.

         2. However, if a response is required, the USPTO online system allows prospective registrants to respond by uploading a .pdf file of their response to the concerns brought forth by the examining attorney.

1. Often these forms of refusals are better handled by experienced trademark lawyers, who are better equipped to argue against the claims of the Office Action.

1. Bureaucratic

   1. Opposition to Principal Registration status

      1. If the proposed mark is a surname, a geographic region or place, a vernacular term of an art or trade, or is descriptive of the service or good offered, the Office Action may refuse registration on account of a Principal Registration being inappropriate for the mark at hand, as any marks bearing any of these features are registered Supplementally instead.

         1. The easiest way to respond to such an Office Action is to prove either that the mark at hand is NOT associated with any of the described categories, or has a meaning outside of these categories, as a non-exclusive association with these categories does not disqualify a mark from being filed in the Principal registry.

         2. Alternatively, the prospective owner can amend their application to file Supplementally. Be forewarned however, as the Supplemental Register does not offer the same protections that the Principal Register does.

1. Disclaimers

   1. The Office Action may request that the prospective registrant specifically disclaim any ownership of parts of a mark separate from the complete mark itself. For example, the mark “GENERIC FOODS”, can be registered federally, however the examining attorney will most likely demand the registrant to disclaim ownership of the phrase “FOOD”, outside of its specific usage within the mark.

      1. This can be done easily through the USPTO application system.

1. Domicile

   1. If there are issues with regards to the addresses of the owner, especially when its is unclear whether the applicant is a foreign or domestic based entity, the USPTO will ask the applicant to amend the issue through the USPTO application system.

1. Classification Issue

   1. The International Classes the USPTO uses to categorize a trademark are crucial to the application. A misscategorization, or filing under multiple categories without paying the required fees, will result in the USPTO requiring amendment of the application through the USPTO online system.

1. Other

   1. There are other, minor, explanations or amendments an applicant may be asked to file. Some examples include;

      1. Whether the mark means something else in a different language.

      2. Improper file formats utilized and require re-uploading.

      3. Improperly defined goods and services.

         1. At times the issue is not the lack of a proper international classification, but a poorly described product or service that requires clarification.

1. All of these amendments can be processed through the USPTO online system.

An office action should not be understood as the basis to abandon a trademark registration. Often, the office action simply provides an opportunity to rectify mistakes or to argue against what would otherwise be a disqualifying feature of the mark.

If you have any questions, or require any assistance, the experienced lawyers at Sari Law Firm are alway available to provide clear and concise legal aid in regards to your trademarks.

THIS ARTICLE IS NOT A LEGAL ADVICE.