Watson IP Group

Watson IP Group

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Your Application for a Trademark is Refused. You Received a Trademark Office Action Response, What Can I Do?

The Steps to Follow if Your Trademark Application was Rejected

Contact a Trademark Attorney if you receive an Office Action or a rejection. That is the easy answer, but again, not every rejection is the same.

Typically, there are different stages of the process, there is typically a first, non final Office Action and a second Final Office Action. The posture of the case and the possibilities in each instance as to the response are different. In response to a non-final Office Action, all points can be raised, and the Examining Attorney will either agree with the arguments and approve the mark for the next step, or issue a final rejection. In response to a final Office Action, it is necessary to either file a request for reconsideration in addition to an Appeal, or just an Appeal. There is no right to have another Office Action from the Examining Attorney.

As to rejections, there can be a vast number of procedural bases for rejection. The Examining Attorney may reject the application, requiring an explanation of the mark, a description of the mark, or a translation of the mark. Typically, while there are proper and improper manners in which to respond, the response to such rejections is generally straightforward for a Trademark Attorney

The Examining Attorney may require a disclaimer of a term or a phrase. A disclaimer of, for example a word essentially means that the word is generic or descriptive of the goods or services, and, the right to use that word is not exclusive to you – except that you can use it together with the rest of the words in your mark. An example would be Alegro Bandages for bandages. The Examining Attorney will require a disclaimer of bandages as the goods are, in fact, bandages. Thus, while you can get a registration on the term Alegro Bandages, you specifically must state that you have no right to the term bandages other than in the entirety of the mark.

While these type of rejections may seem, on their face, easily resolvable, in some instances they are not. There are borderline cases where a term is not necessarily descriptive of the goods or services, and disclaiming the word will allow others to use that word for the same goods. And, that may relinquish rights in the term that did not have to be made. Thus, there are instances where it is best to argue these types of rejections.

Another common rejection is one where the Examining Attorney requires amendment to the goods or services as recited. If your application was filed utilizing the ID Manual of acceptable goods and services, then such rejections typically do not occur. However, in some instances, there are goods and services that are offered that do not fit well into the predefined acceptable goods and services. It is often necessary to discuss with the Examining Attorney to explain the nature of the services, and in some instances, amend the services through a back and forth discussion.

There are also certain substantive Office Actions that are more difficult. These include rejections that are based upon (1) a likelihood of confusion; (2) a descriptiveness rejection – which can come in different flavors, such as geographic descriptiveness, descriptiveness, primarily merely a surname, among others; and (3) failure to function as a trademark, that is, as an indicator of source.

These type of rejections may require in depth study. It may be that when the thirteen factors that are used to address a likelihood of confusion are considered, then it may be that there are factors that support an argument that there is no likelihood of confusion. For example, are there many similar marks for different goods (i.e., is the use crowded). Are the goods and services unrelated? Do the goods and services go through different channels of trade and to different types of consumers? There are plenty of other factors, and each of the factors has roots in caselaw. By studying the caselaw, it may be possible to successfully argue against the rejection.

In the case of descriptiveness rejections, is the mark really descriptive, or can an argument be made that the mark is suggestive of the goods and services identified. Often this is a fine line and there are plenty of cases to draw parallels from in arguing that a mark is not descriptive. In other situations, it may be possible, due to sales, time of use, marketing, among others, to assert that the mark may have been descriptive of the goods, but has now become distinctive and therefore capable of being registered. In other instances, where a rejection is based on a surname, how common is the surname, and is the term primarily a surname.

Failure to function as a trademark rejections often occur with functional/quasi-functional product configurations, packaging configurations, and designs that are more appropriately artwork or the like. These rejections also often require in depth study and analysis of case law and prior litigated trademark applications to find analogous situations or favorable case law supporting the position.

The main takeaway is that a rejection of the trademark and the receipt of an Office Action does not spell the end of the road for a trademark. In many instances, rejections in Office Actions can be successfully argued by a trademark attorney.

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