Tag: rejection

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.