How to Respond to a Trademark Office Action

Receiving a Trademark Office Action isn’t the end of the world. Instead, look at the Office Action as an opportunity to strengthen your marketing vision.

As a first step for non-lawyers who may be reading this: breathe.

A trademark office action is rarely the end of the world. In fact, they are often quite easy to fix. In most cases, you’ll just have to tweak a few minor details on your application. For others, you simply need to clarify how exactly you’ve been using your mark.

However, in extreme cases the office action may point out serious issues with your trademark. For example, that the U.S. Patent and Trademark Office (USPTO) can’t register your mark if they’ve already registered a similar mark. If you receive one of these actions, you’ll probably be better off registering a different mark.

You can avoid most office actions with the aid of an experienced trademark attorney. However, you should know how to respond to one if needed. In this article, we’ll go over the basics of office actions in general, and provide general tips for responding to one.

Read the Rejection Notice

As we mentioned at the very start, the first step is to simply breathe. You should try and understand where the examining attorney is coming from. In many cases, the cause of your office action is something that could cost you money, time, and heartache. Think of an office action as a warning that your trademark might not be as strong as you originally thought.

For example, the examining attorney might believe your trademark is too descriptive to be on the Principal Register, or perhaps it’s likely to cause confusion with an existing trademark. Maybe a portion of your mark is descriptive. In all of these cases, the office action actually protects you from future legal battles over you mark.

Trademark law has its own vocabulary. If after reading the letter you are completely lost, you should hire an attorney. Even if you hire an attorney, keep reading, because understanding the process will likely help you appreciate what your attorney will do for you.

Additionally, you might consider reaching out to the examining attorney and requesting an interview. Each office action will contain the examining attorney’s contact information, so you may be able to give them a call. While they can’t counsel you on how to proceed, the conversation you have may give you a better idea as to how to respond.

Common Reasons for Rejection

After you’ve read and considered the arguments brought up by the examining attorney, you should try and find a solution that works for everyone. We’ll list the two common reasons for rejection below, as well as possible ways you can respond to each issue. Regardless of the specific reason for your rejection, you should take this time to consider whether your mark actually has a strong case for being trademarked.

Descriptiveness

The USPTO actually has two different lists you can register your trademark on: the Principal and Supplemental Registers. If you mark is descriptive, you cannot register it on the Principal Trademark Register.

If your mark is being rejected on the basis of descriptiveness, you can either:

  • Present extra evidence that shows your mark is not descriptive.
  • Instead apply for a position on the Supplemental Register.

When finding extra evidence, you should show exactly how the words are used in common speech. Practically speaking, you should show that the logo or name is more suggestive of your business than of its original meaning.

For example, “International Business Machines” is descriptive, but “IBM” is highly suggestive of the multinational company. This case highlights something called “inherent distinctiveness,” but there are several other ways to prove your case. If you can provide marketing plans, survey evidence, or blog and news articles that demonstrate your claim, the examining attorney might also change their mind.

In many cases, however, it’s much easier to simply apply for the Supplemental Register. After five years on this register, you can re-apply for the Principal Register and receive all the protections of a normal, non-descriptive trademark.

In this case, USPTO assumes that if no one has contested your descriptive mark for five years, then it has acquired the “distinctiveness” necessary to qualify for the Principal Register.

Likelihood of Confusion

A rejection based on a likelihood of confusion is more problematic. This means the examining attorney believes that your trademark is too similar to another registered mark.

For example, you can’t start a computer company and name it Appple. Doing so would cause customer confusion with the already-established Apple brand.

If your application is rejected because of a likelihood of confusion, you’ll need to demonstrate that customers aren’t actually confused about who makes which product. For example, you could conduct surveys among your shared consumer base, or provide evidence from a variety of sources such as advertisements, marketing campaigns, journals, and more.

What you are trying to do is distinguish your trademark from the existing mark. The goal of your evidence should be to demonstrate that there is no current confusion, and there isn’t likely to be confusion in the future. Two companies bearing the exact same name, but operating in two completely different Trademark Classes, may both be able to register their trademarks with the USPTO.

However, it’s still generally a better idea to avoid this fate.

Formatting Your Response

Now that you have your arguments, you’ll want to sit down and draft your response. However, for many the phrasing can sometimes feel unnatural. Again, this is where it might be helpful to hire an attorney. Alternatively, you could read up on the trademark process on the USPTO’s website.

The USPTO is actually fairly advanced for a government organization, and their website actually provides a lot of information on the subject of office actions. In fact, they have an entire page dedicated towards responding to office actions.

While you should probably still have an attorney look over your response, actually submitting this response is quite simple.

Remember, however, that a final office action often means you’ll have to go through the entire application process again, fees and all. You’ll want to avoid this at all costs by fixing your application properly the first time. Because of this, hiring an attorney is often cheaper in the long run since you only have to file once.

Conclusion

Your intellectual property is valuable. While you can respond to an office action by yourself, you should still have an attorney at least look over your application. Remember, every response you provide to the USPTO becomes part of the permanent record related to your trademark. You want to get it right the first time.

More importantly, you want to help the examining attorney understand the unique appeal of your mark. By refining and strengthening your trademark after an office action, you’ll gain even more powerful protections for your brand in the future.

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