Unbeknownst to most applicants, the U.S. trademark registration process can be complicated and full of potential landmines and sometimes lead to Office Action Refusals.  One of the upsides to working with an experienced trademark attorney is that you’ll have a trusted adviser to point out these pitfalls and hopefully help you to avoid them. However, at some point during your federal trademark process, it is not unusual to find yourself on the receiving end of an Office Action from the Examiner assigned to your trademark application.

Common Office Action Refusals That Can Sidetrack Your Trademark Application

The U.S. Patent and Trademark Office (USPTO) and its team of Examiners issue Office Actions as a standard part of the trademark application review process. 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 Action barring registration of your mark based on likelihood of confusion with a pending or registered mark or lack of sufficient distinctiveness.

This month, we consider some of the most common Office Action refusals you may encounter during your trademark process.

Common Office Action Refusals

Some common reasons the USPTO may refuse your trademark application include:

1. Likelihood of Confusion – Your mark conflicts with a similar registered trademark or a prior pending application for related goods and/or services. This is known as the “likelihood of confusion” standard of review.  The Examiner will refuse your application if he or she finds that registration of your mark may create a likelihood of confusion with the registered or pending mark in the marketplace if both marks are allowed registration.

Also referred to as a Section 2(d) refusal under the Lanham Act, likelihood of confusion is the most common substantive refusal. If the USPTO bars registration of your mark based on likelihood of confusion, you will have an opportunity to present persuasive arguments and evidence as to why your mark should be allowed registration. A comprehensive trademark search prior to submitting your trademark application usually reduces the likelihood of your mark conflicting with a prior pending or registered trademark.

2. Merely Descriptive or Genericness – The USPTO may refuse registration of your mark if the mark lacks sufficient distinctiveness or is generic when used in connection with your proposed goods or services. 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 term(s). In the alternative, the USPTO may allow registration of the mark only on the Supplemental Trademark Register.

3. Improper Specimen – The USPTO may refuse registration of your mark if the specimen submitted to show use of your mark does not exactly match the mark 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.

4. Merely Ornamental – Another common Office Action closely related to Specimen refusals concerns merely ornamental marks. We see this often for t-shirts, mugs, keychains, bumper stickers and other promotional items. Based on the specimen submitted, the USPTO may find that the mark proposed for registration does not serve as a unique identifier but is being used in a merely ornamental or decorative way. To qualify for trademark registration, a mark must serve as a unique identifier of the source of your goods or services. If your mark is simply printed on the front of a t-shirt, or on a bumper sticker, the USPTO may refuse registration of the mark. This refusal can usually be overcome by submitting a specimen showing the mark on tags or labels affixed to your garments, or on appropriate packaging for other items.

5. 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 region or location 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 registration based on geographic descriptiveness (e.g., California Wine). On the other hand, if your mark includes a geographic indicator but the goods do not originate from the region, but the public is likely to believe they 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.

6. Primarily a Surname – Certain trademarks that contain surnames may be refused under Section 2(f) of the Lanham Act. A mark that is “primarily merely a surname” is not registrable on the Principal Register absent a showing of acquired distinctiveness. Certain names, like Johnson or Smith, may be deemed primarily merely a surname, while others, such as King or Brown, may be permissible as they have significance other than as a surname. Surname refusals may be overcome by amending your application to the Supplemental Register.

Responding to an 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 issues raised 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 reducing the likelihood of our clients receiving USPTO Office Actions through our comprehensive trademark search service, which uncovers and highlights potential risks during the trademark process. We have also had high rates of success in overcoming USPTO Office Action refusals on behalf of our clients.

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.



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