USPTO Trademark Office Actions

What To Expect During The USPTO Application Process

The U.S. trademark registration process can be complicated. One of the benefits of working with an experienced trademark attorney is that you will likely avoid most of the pitfalls in the trademarking process. However, it is not unusual to receive an Office Action from the USPTO at some point during your trademark application process.

The USPTO and its team of Examining Attorneys may issue an Office Action if there is an issue with the trademark application. The Office Action may be for a non-substantive issue, such as a request for additional information, disclaimer or clarification in the trademark application, or it may be a substantive Office Action barring registration for any number of issues, including likelihood of confusion with a registered mark, mere descriptiveness or failure to comply with the Trademark Act.

common uspto office actions for refusal of trademark application eplained

Common USPTO Office Actions Include:

Some common reasons your trademark application may be refused registration at the USPTO include:

Merely Descriptive or Genericness – If your mark is not sufficiently distinctive, or merely descriptive of your proposed goods or services, the USPTO may refuse registration. Under current U.S. trademark law, a mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If your mark is comprised of several words but contains one or more descriptive elements, the Examiner may permit registration of the mark with a disclaimer of the descriptive or generic content. In the alternative, the USPTO may allow registration of the mark only on the Supplemental Trademark Register.

Likelihood of Confusion – Your mark conflicts with a similar registered trademark and may create a likelihood of confusion among potential consumers if both marks are allowed registration. This is one of the most common USPTO refusals. If someone else has registered your identical trademark, or something very similar, for related goods or services, the USPTO will bar registration of your mark unless and until you present persuasive arguments why your mark should be allowed registration. A comprehensive trademark search, ideally one conducted by an experienced trademark attorney who knows what to look for, usually reduces the likelihood of your mark conflicting with a prior pending or registered trademark.

Improper Specimen – The USPTO may refuse registration of your mark if the specimen submitted to show use of your mark in commerce fails to exactly depict the mark as submitted for registration or doesn’t match the goods or services listed in the application. The USPTO is exacting when it comes to trademark specimens. If your specimen differs in any way from the drawing of your mark shown in the trademark application or the goods or services specified, the Examiner may refuse registration on the basis of an improper specimen. This is a non-substantive refusal that can usually be overcome by submitting a proper, matching specimen.

Geographic Significance – There are two bases on which the USPTO may refuse registration based on geographic indicators, (1) if your mark is geographically descriptive, or (2) if your mark is geographically deceptively misdescriptive. If your mark includes a geographic term and the goods actually originate from that region, and the purchasing public is likely to believe that the goods originated from that region, your mark may be refused on the basis of geographic descriptiveness (e.g., California Wine).

If your mark includes a geographic term (e.g., Paris) but the goods (e.g., perfume) do not originate from that place, but the public is likely to believe the goods do originate from that region and that is an important part of their purchasing decision, then your mark may be deemed geographically deceptively misdescriptive. In both cases, the USPTO may refuse registration of the mark.

Merely Ornamental – A common basis of refusal for t-shirts, mugs, keychains, stickers and other promotional materials involves marks that are merely ornamental. Based on the specimen submitted, the USPTO may find that the mark proposed for registration does not serve as a trademark but is being used in a merely ornamental or decorative way.  This is common with printed or graphic t-shirts. To qualify for trademark registration, a mark must serve as a unique identifier of the source of your goods or services. So if your mark is simply printed on the front of a garment, or on a sticker, it may not serve as a trademark for purposes of trademark review.

Responding to a USPTO Office Action

Once an Office Action is issued, you have six (6) months from the date of the Office Action to file a response addressing the refusal in the Office Action. If you do not file a timely response within the 6-month period (or within the two-month grace period following the initial deadline), your trademark application will become abandoned.

The trademark attorneys at Flat Fee Trademark have been highly successful in overcoming USPTO Office Action refusals on behalf of our clients. We try to reduce the possibility of our client’s receiving Office Actions in the first place through our Comprehensive Trademark Search service.

Contact Us For a Free Office Action Consultation

Our trademark attorneys are available to assist you in responding to USPTO Office Actions. Since Office Actions are different and unique for each application, please contact us for more information or for a quote on your specific Office Action, (800) 769-7790, or send us a message using the Contact Form.

 



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