Tag: office action

Likelihood of confusion

One very common trademark application issue is likelihood of confusion with another registered or pending trademark. Depending on the specifics of the cited mark or marks, an Office Action containing likelihood of confusion can be a major obstacle in the way of registration. The main thing the examiner will look at is whether a consumer is likely to confuse or mistake your trademark for another. In determining this the examiner will look at the text, logo, appearance, sound, and entirety of your mark’s commercial impression. It is important to note that such confusion must be probable, not just possible. Other factors that play a part in determining likelihood of confusion include the strength and distinctiveness of the cited mark, relation of goods/services, consumer sophistication, third-party use, quality of goods, advertising and sales, and other relevant evidence. There are other options to deal with likelihood of confusion such as negotiating a co-existence agreement with the owner of the cited mark. Likelihood of confusion is one of the tougher issues to deal with and at the end of the day it all may come down to examiner’s opinion. Before fighting it is important to consider all possibilities and outcomes.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a Disclaimer?

It is very common for Office Actions from the USPTO to contain a requirement for a disclaimer. A disclaimer is a part of a trademark which you are unable to register. This does not mean that your mark will not register or be protected, nor does it mean the disclaimed portions will be ignored when comparing your mark to those which may conflict with it. It only means that a portion of what you are trying to claim will only be protected as it relates to your entire mark. In other words, your exclusive rights for the disclaimed portion only apply to the context of the entire mark and not by itself. This will not impact your rights as far as your entire mark is concerned. Disclaimers are usually necessary for generic words, descriptive terms, or ornamental designs. Do not fret if the Office Action issued by the examiner has a disclaimer requirement. Disclaiming necessary parts of your trademark is very routine procedure and many registered marks have parts which are disclaimed.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Overcoming Rejections

The specific strategies to overcome the many different grounds for rejection vary. One good place to start can be to call and speak with the examiner that issued the Office Action against your application. Sometimes minor issues can even be resolved this way. Even if they cannot be solved with a phone call, hopefully the examiner can give you a better sense as to what the issues are and how to proceed. Many applicants elect to hire a licensed attorneys specializing in intellectual property. The issues contained in Office Actions generally require attention to specific details and instructions pertinent to the application itself (procedural issues) or a thoughtful well-crafted response to issues with the mark itself (substantive). In either case having an experienced private attorney review your Office Action and file your response can help prevent future issues and delays. Do not risk losing your trademark by trying to respond when you do not understand the issues or what the examiner is looking for.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Why was my application rejected?

There are many reasons why your application could have received a rejection from the USPTO examining attorney. Rejections are issued as an Office Action which you may have the chances to respond to. Issues with your specimen, the drawing, or the description and classification of your goods/services are very common grounds for rejection. You also could have simply forgot something such as your signature or the necessary dates. The issues mentioned so far are usually procedural, meaning they are based on your application and not on the nature of the mark. Rejections based on the nature of the mark are more substantive issues. Such issues include your mark being merely descriptive, geographically descriptive, a surname, or likely to be confused with a registered mark or a prior pending application. Substantive issues are generally harder to correct than procedural issues as time and though must be putting into crafting a full adequate response as to why you disagree with the examiner’s assessment. Rejection can also occur if the examiner does not feel your desired trademark can function as a trademark such as when it is only an ornamental design, functional design, or is part of a background design and does not create a separate commercial impression.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Office Actions

All applications filed with the USPTO undergo review by an attorney examiner. The examiner’s job is to ensure that there are no procedural issues with your application and that the trademark you are seeking to obtain is eligible to register. If the examiner finds an issue with your application, they will issue an Office Action. Once issued you will have six months from that date it was issued to respond to all the issues it contains. If you do not respond to an Office Action within six months, then your application will be abandoned. Once abounded you have two months from the date of abandonment to file a petition of revival. If you respond to some, but not all, of the issued then the examiner will issue another Final Office Action meaning you have one last chance to comply with all the issues raised or else the application will be abandoned. Your only other option is to appeal to the Trademark Trial and Appeal Board (TTAB). Check the status of your trademark application regularly to make sure there was no Office Action issued. When responding make sure to respond to all issues raised by the examiner.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.