Should You File Your Own Application

Or Answer Your Own Refusal?

It looks easy but it isn’t. About 70% of trademark applications are refused at least once. Filing a USPTO trademark application is a legal proceeding that requires an applicant to satisfy many legal requirements within strict time deadlines. An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney. The USPTO is represented by an experienced  well-trained full-time attorney. All trademark information–Trademark Applications (applications, drawing, specimen), Office Actions, Responses to Office Actions (ROA), assignments, petitions, etc– submitted to the USPTO is public information readily available to the public including any of your investors or future potential investors.

Having a solid, enforceable trademark and trademark application and registration is a good investment. Most Not Just Patents’ clients are small businesses but we also do work for other attorneys.


Overcoming A Substantive Refusal

Not Just Patents ® Legal Services answers refusals for any of our application clients as part of the service at no extra charge. We also answer refusals for clients who have used other services and sometimes will even offer a discounted service if you used one of the form services who really messed up your application.

If an applicant is not represented by an attorney it is called pro se. A pro se applicant may be able to answer refusals themselves but keep in mind that your adversary, the USPTO trademark examiner, is a well-trained full-time attorney with experience in deciding if applications meet USPTO rules and trademark law.

If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. If you are going to try and answer the refusal yourself, you should simply and completely address the points raised by the examining attorney in the Office Action. Applicants are not required to provide case law support but may if it is appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal.

Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board and submit a request for reconsideration if appropriate; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. The same trademark issues that caused the refusal may also limit the rights associated with the mark under common law.


MERELY DESCRIPTIVE ISSUES

Office Action(s) from USPTO

The refusal rate for trademark applications is very high, about 70% of applications receive at least one office action refusal and ultimately about half register as trademarks. Some actual redacted refusals for being “merely descriptive” are shown below.

Applicants (or their representative) must address each issue raised by the examining attorney and responses to office actions (ROA) must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned.

If the first response does not overcome all refusals, the examining attorney will issue another refusal or a final refusal. [Some trademark applications take years to cycle through all the refusals and replies.]

An examiner may suggest registration on the Supplemental Register as an alternative to the Principal Register to overcome a merely descriptive refusal, distinctiveness refusal or failure to function as a trademark or other reasons. See Comparison of Principal Register and Supplemental Register.

To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.


TRADEMARKS

The response time for an office action for a Trademark Application is six months from the mailing date of the office action. After that time the application is declared abandoned.

TMEP 718.02 Failure by Applicant to Take Required Action During Statutory Period

15 U.S.C. §1062(b). If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.


WHAT ARE OFFICE ACTIONS AND HOW TO RESPOND TO AN OFFICE ACTION FROM THE USPTO

Office actions are first action correspondences from the assigned USPTO  trademark examiner that set forth the legal status of a trademark application if the trademark application does NOT meet registration requirements.

There are several types of office actions:

1. Examiner’s amendments;

2. Priority actions;

3. Office actions (non-final and final); and

4. Suspension letters.

Note: If the trademark DOES meet registration requirements, the first action of the USPTO (the ‘TRAM Snapshot of App at Pub for Oppostn’) may go unnoticed by the applicant until the applicant receives a postcard or email of the ‘Notice of Publication.’

Types of Office Actions

(from http://www.uspto.gov/trademarks/process/update/oa.jsp)

   1. Examiner’s Amendment

     An examiner’s amendment is a written confirmation of an amendment made to an application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.

    

  2. Priority Action

     A priority action is a letter [electronic] in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant’s attorney. Unlike an examiner’s amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding.

     The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

     The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing.

 

3. Office Action

     An office action is a letter in which an examining attorney sets forth the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.

     Applicants must respond to an office action within 6 months from the date the office action is mailed. If applicants fail to do so, their applications will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

     There are two types of office actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only response to a final office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.

  4. Suspension letters

     A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application]. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.


HOW TO RESPOND TO OFFICE ACTIONS

There is no set form or required format for responding to an office action. Applicants should address each issue raised by the examining attorney. Very often the trademark examiner will give advice on how to answer the office action.

Actual examples of general responses suggested by a trademark examiner follow. The first is for a ornamental refusal on a t-shirt is (very common refusal):

The applicant may overcome the above-stated ornamental refusal by doing one of the following, as appropriate:

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §§1202.03(d) and 1212.06 et seq; or

(2)   Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, the applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through the applicant’s use of the proposed mark with goods or services other than those identified here.  In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  The applicant must establish that, as a result of this use on other goods or services, the public would recognize the applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

(3)   Submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); or

(4)   Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

Another example of trademark examiner advice to overcome a refusal for Failure to Function as a Mark for a trademark application for a band name:

Applicant may respond to this refusal by (1) submitting evidence that the mark has been used on at least two recordings, and (2) amending the identification of goods to state that the sound recordings comprise a series, i.e., series of pre-recorded compact discs, Digital Versatile Disk, audio cassettes, video cassettes, and phonograph records, all featuring music and/or musical performances; Downloadable musical sound recordings; Downloadable video recordings featuring music and/or musical performances, in Class 9.



Answering Office Actions

There are few canned answers on how to answer trademark office actions because there are few typical refusals, (ornamental refusals for clothing being one exception). General advice in answering office actions does not take actual applications into account. Registration of a trademark is specific to the facts involved and involves legal rights (it is Not Just a form).

Some refusals are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes (this is often the answer for an ornamental refusal). Many first time applicants mistake drawings and specimens and submit only drawings. Sometimes a better identification of goods and services is required not just for the application but also to actually specify what is in actual use. Improper identification can cause an application or registration to be void or may indicate fraud. See Fraud on the USPTO for more information.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law because they  are conflicting marks and someone else has prior rights to that mark. Some trademarks lack a minimum level of distinctiveness, lack acquired secondary meaning or the capability of acquiring secondary meaning. In these cases, sometimes secondary meaning can be proved, distinctiveness can be argued, or registrations may be amended to the Supplemental Register.


If you have received a refusal, even if you don’t pursue answering the office action and seeking registration, it may be valuable to your firm to evaluate if you should even keep using the mark. A new party seeking registration puts diligent trademark owners on notice for potential infringers and clearing up the registration issues may also clear up potential infringement issues. In other words, a new party applying for a trademark that conflicts with an already registered mark is giving national notice of an intent to infringe or perhaps actual use in commerce that is infringing. Some new parties receive cease and desist letters before their applications are even examined and are forced to expressly abandon their applications or face lawsuits.


If your trademark has value and you want to save the money that you have already invested and secure more rights through federal registration, Call us at 1-651-500-7590. We have an excellent track record of getting marks registered. Many law firms and registration services actually have terrible records for getting marks registered. Dare to compare! See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.




Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

IP@GoNJP.com


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


StepsToATrademark.com

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email IP@GoNJP.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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