Responding to Office Actions from the United States Patent and Trademark Office

What is an Office Action?

An Office Action is a type of rejection letter issued by the United States Patent and Trademark Office (USPTO) with respect to your trademark application. Office Actions may be issued, among other reasons, due to likelihood of confusion between your mark and a registered trademark, geographic descriptiveness, the generic or descriptive nature of the mark, or because the USPTO requires some additional information regarding your trademark before it can proceed to registration. Just because you have received an Office Action, does not mean your mark can’t achieve registration. In many instances, applicant’s may timely and appropriately respond to the Office Action and their mark can proceed to registration.

Refusal based on Likelihood of Confusion:

An Office Action issued for likelihood of confusion means that the USPTO believes that a trademark is already registered which is similar in sound, appearance, and commercial meaning to the Applicant’s trademark and registered in a similar class of goods or services. The USPTO does not allow similar marks to be registered for similar goods and services, because it may confuse consumers as to the source of the goods or services. Likelihood of confusion refusals are typically difficult to overcome as they require convincing the USPTO that your mark is in fact dissimilar in either sound, sight, and/or meaning, and/or the mark belongs to a dissimilar class of goods and services. With this type of refusal, it may be necessary to hire a trademark attorney to assist with submitting arguments to the USPTO. Trademark attorneys have experience responding to likelihood of confusion refusals and will be able to ascertain the best arguments that are available.

Generic and Descriptiveness Refusals:

If a mark is generic or merely descriptive, it will most likely receive an Office Action. A mark is generic if the name of the mark is the actual name of the goods. For example, the mark TISSUE for facial tissues is generic because that is what the actual goods are called. Similarly, a mark is descriptive if it merely describes the goods or service. For example, the mark SOFT TISSUE for facial tissue is merely descriptive because it describes the soft characteristic of the goods. The USPTO wants to protect the right of members of the general public to be able to call their goods by their actual name. This means that not just any one person can own the generic name for goods or services and prevent others from using that name. In some cases, these types of refusals may be overcome if you can convince the USPTO that the mark is not actually generic or merely descriptive. This is a difficult refusal to overcome, however, trademark attorneys can assist with identifying the proper arguments to make, if applicable.

Refusal based on Geographic Descriptiveness:

An Office Action based on geographic descriptiveness means that your mark has been rejected because it contains the name of a place such as a city, state, town, street, neighborhood, or other regional identifier. If one person is allowed to own the rights in a geographically themed trademark, they would be able to prevent others from doing so. Therefore, the USPTO makes these rejections because trademark law protects the right of members of the general public to name their businesses after their particular geographic region. In some cases, these refusals may be overcome by convincing the USPTO that the mark is not in fact geographically descriptive.

Note: Some of the refusals discussed above may be overcome by showing 5 or more years of continuous use of the mark in commerce.

Office Actions Requiring Additional Information:

Some Office Actions are issued in order to obtain additional information from the Applicant. An Office Action requiring a disclaimer, for example, means that an Applicant is being asked to disclaim a portion of the Applicant’s trademark. Before responding to such an Office Action, an Applicant should consult with an attorney to find out how the disclaimer will affect their rights in the mark. Other Office Actions may request the Applicant to clarify the colors or descriptions of their trademarks. The Office Action may even offer a suggestion on how to clear up the issues in the Office Action which if accepted by the Applicant, may quickly resolve issues and allow the mark to proceed to registration.

This blog does not contain an exhaustive list of potential refusals. If you receive an Office Action and you are unsure how to respond, you should consult with a trademark attorney in order to obtain the best possible outcome.

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