Office Action Response Guide
A few months ago you filed your own trademark application, like a boss. Everything was going great until you got a “Courtesy” notice from the USPTO telling you that an “Office Action” has been issued. You clicked on all the links and found that an attorney at the USPTO refused to register your trademark application for a bunch of reasons that hardly make any sense.
Take a deep breath. Don’t panic. Many refusals can be overcome.
We made this guide to help you understand what “Office Actions” AKA trademark refusals are, how and why they happen, and what you need to do to respond and hopefully overcome the refusal. It won’t make you an expert, but we hope that it will at least allow you to make an informed decision about what to do next.
Of course, if you don’t have the time or energy to try to figure out how to do it yourself, you can just contact us for a free consultation. We will help you determine the best way to move forward.
If you want to try to do it yourself or just want to learn more before chatting with a lawyer, read on!
Responding to an Office Action in Four Not-So-Easy Steps
These are the basic steps involved in responding to your Office Action.
- Don’t freak out.
- Figure out the reason for each refusal and how (or if) you should respond.
- Call the Examining Attorney to discuss your position.
- Draft and submit the response or find a new trademark.
We’ll go through each of these steps in the following sections.
Step 1- DON’T FREAK OUT
Getting an Office Action is not as good as not getting an Office Action, but there are several reasons not to freak out:
- You have six months to respond, so you can put off freaking out for another five months and three weeks.
- You can overcome a refusal. We do it for clients all the time.
- Some Office Actions mean the end of the road for your trademark application, but many Office Actions are no big deal. We’ll discuss the different types in a bit.
- It’s tough to hear, but terrible refusals are usually a result of applying for a terrible trademark. Rebranding can be expensive and a pain in the neck, but the USPTO is really doing you a favor by not allowing you to have a descriptive trademark or a trademark that is too close to someone else’s trademark.
- You can always contact us for a free evaluation of your situation. We’ll explain your situation and let you know what your options are.
With that in mind, let’s take a deep breath and get our learn on.
Step 2- Figuring out the Reason for the Refusal and How (or if) You Should Respond
Honestly, this is the most difficult part of the entire process. You need to go through the Office Action, look up each refusal in the TMEP and figure out how to respond. We’re going to provide you a little framework here for understanding refusals, but it’s no substitute for actually evaluating each refusal and the appropriate response using the TMEP.
Types of Trademark Refusals
We lump trademark refusals into two categories: procedural refusals and substantive refusals. Procedurals refusals relate to the formalities of the application. These refusals involve things like how you identified your corporate entity or how you described your logo. Generally, these refusals are easy to overcome. Substantive refusals, on the other hand, relate to the trademark itself and are typically more complicated to respond to than procedural refusals. Typically, substantive refusals involve potential confusion with a similar trademark or one of the forms of descriptiveness.
These are not official categories by any means, but a useful way to distinguish the ones that are typically easier to respond to from the ones that are harder. We charge a flat fee of $250 to respond to procedural refusals and $850 to respond to substantive refusals.
First, let’s talk about procedural refusals.
Procedural refusals are nice (as refusals go) because, many times the Examining Attorney will specifically lay out what she wants you to do to overcome the refusals. Although sometimes it’s fine to just accept these suggestions, you shouldn’t just blindly accept the recommendations because they can limit your trademark rights. Here is a brief discussion of the procedural refusals we see the most (in no particular order):
Problems with ownership information
Trademark applications can be refused for inconsistencies within the ownership information. Most commonly these involve listing the owner as an entity and listing an owner name that is clearly an individual or vice-versa.
If the owner name is right and the type of entity is wrong, you can just change the entity type. If, however, you’ve indicated the wrong owner, you will need to refile the application which means you will lose your filing date and your filing fees, which is sad.
Problems with how you stated your goods and services
Examining Attorneys sometimes take issue with the words you use to identify the goods and services you plan to use your trademark with. Typically, they will suggest a new way of stating the goods and services that will make them happy. Most of the time, this is no big deal; however, it can cause problems if the proposed goods and services do not accurately reflect what you are doing. If they are recited too narrowly your trademark rights may be limited. If they are recited too broadly, you may lose protection for not being able to prove that you are using the trademark for the goods or services as stated. Confusing, right?
Problems with the design
If you have a logo or other design elements, the Examining Attorney may refuse your application for how you described the design, how you claimed colors in your design, or the quality or features of the file you uploaded. Usually, they will propose a new description or point out what is wrong with the design that you uploaded. It is still best to make sure that the new description or design file accurately describes how you use or plan to use the trademark.
Problems with your specimen
If you claimed to be using the trademark when you filed it, you were required to upload proof (a specimen) showing that you were using the trademark for the goods or services you listed. There is a lot that can go wrong here.
Many specimen related refusals have to deal with the specimen itself. First, there can be issues with the file you submitted, just like with design files. Second, you may not have picked the right type of specimen. There are a bunch of rules about what types of evidence you can use for a trademark, which are all outlined in the TMEP. This frequently requires you to submit another specimen. There are worse things that could happen.
Other specimen related refusals stem from other issues. For instance, you may have submitted goods and services that don’t reflect what you actually do. This makes it appear as if the specimen is insufficient, when in reality it is the goods and services that are incorrect. This requires you to change your goods and services. Bear in mind that a change in goods and services may lead to a descriptiveness or likelihood of confusion refusal that was not at issue under the incorrect goods and services, so you may find yourself reviewing this guide again down the road.
Finally, and most scary, is that you may have applied for the wrong trademark, which will appear to the Examining Attorney to be a problem with the specimen. This is actually a very easy mistake to make. This commonly happens when someone uses a trademark without a descriptor and files for the trademark with a descriptor, or vice versa. For example, let’s say you own a computer company called Apple Computers, Inc. so you file for the trademark APPLE COMPUTERS. But, for advertising purpose and in the public, you only refer to your company as APPLE. If you cannot provide evidence that you were using the trademark APPLE COMPUTERS as of the date you filed the application, you will have to begin using APPLE COMPUTERS and re-file the trademark application or abandon that application and file another application for APPLE alone. Either way, you lose your filing date and your filing fees, and that’s a real bummer (but that’s why we are here to help).
Next, let’s talk about substantive refusals.
Substantive refusals are typically not good news. They can be difficult to overcome and responding to them requires sound writing and legal arguing skills. The following is an explanation of the most common substantive refusals and the most common arguments to overcome them.
Likelihood of Confusion
The USPTO will compare your trademark to existing trademarks and if a trademark along with its goods or services are too similar to your trademark and goods or services, the USPTO will refuse the trademark. (This is why it is beneficial to perform a search to determine if there are any similar marks. If you are thinking about filing another trademark, ask us about our free search promotion.)
There are a few ways to overcome these refusals, but likelihood of confusion rejections are tough ones. Essentially, you need to prove that customers would not confuse your trademark with the trademarks pointed out by the USPTO. You can point out the differences in the trademarks and the differences in customer base or streams of commerce. You can point out that the USPTO has registered trademarks that contain key parts of the trademarks. No matter what, you always have an uphill battle.
The USPTO will refuse to register any trademark that merely describes the goods or services because no one should be allowed to stop others from using common words to describe their products or services when those common words describe the products or services. For example, if you have a store that sells boots, and you name it Boot Store, the USPTO will not let your register the trademark BOOT STORE for boots because it merely describes the product you are selling, and it would be unfair to prevent others with store that sell boots from describing their stores as a “boot store.”
These refusals are common because the concept of descriptiveness conflicts with the natural inclination to pick a trademark that tells people what your product actually is. There is a similar inclination to name your business after your city or your last name, but trademarks that include geographic terms and last names are frequently found to be descriptive as well.
Your ability to overcome these refusals really depends on how descriptive your trademark is. You’ll need to convince the Examining Attorney that your trademark is not descriptive. You can use dictionaries, evidence from the Internet, or anything else you can get your hands on to prove that your trademark is not descriptive, but just “suggestive” (that’s a term of art) of what you do. For trademarks with more than one word, you can cite other trademarks that have been registered for similar goods or services.
Even if your trademark is descriptive, you may be able to argue “acquired distinctiveness” if you can show the trademark has a “secondary meaning,” i.e. that customers associate the trademark with your business. In other words, if you can show that people think of your business when they hear or see the trademark, you can potentially overcome the refusal.
Even if you cannot overcome the refusal, you can ask to have your trademark registered on the Supplemental Register. The Supplemental Register is basically the JV team for trademarks. If your trademark acquires distinctiveness while on the Supplemental Register, it can get moved up to the varsity team—the Principal Register (which is what you probably originally applied for).
A registration on the Supplemental Register does not provide all the protections of a registration on the Principal Register, but it does grant its owner the right to use the registered ® symbol when the mark is used with the goods or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods or services.
Sometimes only part of a trademark is descriptive. If that is the case, the Examining Attorney will ask that you “disclaim” part of the trademark.
Disclaiming simply means that you are not claiming rights to the descriptive parts of your trademark on their own. For instance, if you filed an application for APPLE COMPUTERS, the Examining Attorney may ask you disclaim COMPUTERS and state that you won’t try to stop someone from using the term “computers” in their trademark.
Disclaimers are very common and are usually no big deal, but you should always consider the impact of the disclaimer. Sometimes it makes sense to invest the time and effort to fight them.
The USPTO will refuse to register any trademark that is merely a decorative feature that doesn’t distinguish the goods from others. This is a biggie for people who try to register trademarks for t-short slogans.
Words become trademarks when they identify the source of goods. T-shirt slogans (alone) don’t usually serve that purpose and, therefore, aren’t trademarks at all. So, these refusals are very difficult to overcome.
Next, let’s move on to Step 2, Calling the Examining Attorney
Step 3- Calling the Examining Attorney
After you figure out what you did wrong and come up with a game plan for responding, you should call the Examining Attorney to figure out if you are on the same page. It’s important to understand their position and for them to understand your business. Sometimes, they can help you address procedural issues right over the phone.There are two really important things to bear in mind when talking to an Examining Attorney:
Be nice. They are human beings trying to do their jobs and deserve respect. They also hold the fate of your trademark application in their hands.
They are not there to help you get a trademark. Filing a trademark application starts an administrative legal proceeding. While they are not exactly adverse to you, they aren’t your buddy either. They are also not allowed to give you any advice about what to do. That is probably why the USPTO recommends that you hire an attorney to help with the filing and management of your trademark application. Next, we’ll move on to Step 4, Drafting and Filing a Response.
Step 4- Drafting and Filing a Response
Many procedural refusals can be handled without a formal written response, but most substantive refusals will require you to write out why you think the Examining Attorney’s refusal is wrong. Your arguments should be well-reasoned and supported by citations to the TMEP, federal law, and factual evidence. The tone should be polite and respectful. Remember, the person you are trying to persuade is the same person who you are saying messed it up in the first place.
Responses to Office Actions are filed online using electronic forms provided by the USPTO. There are sections on the form for responding to every type of refusal and, for refusals that require written arguments, the system allows you to upload them along with any proof you need to submit.
Next, let’s wrap it up!
You Made It! We hope this guide has been helpful to you. If you’ve seen the size of the TMEP, you know that the stuff we’ve just told you is just a rough overview of trademark refusals and the process for responding to them. We’ve provided this guide for informational purposes only. Trademark refusals are like snowflakes. No two situations are exactly alike. There are a million different refusals and each have exceptions and exceptions to the exceptions. The factual issues are different from case to case. So, nothing in this guide should be considered legal advice about your particular situation.
We highly recommend you seek help from an attorney to understand how to best address the specific facts of your refusal.
We’d love for you to hire us, but because you haven’t yet, you need to know that no attorney client relationship has been formed by reading this material. If you are ready to talk to us, we’re available for a free consultation.