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Responding to Trademark Office Actions

Filing a trademark application is only the beginning of the process. In an ideal world, the application will be found to be perfect after a routine examination (usually about 3 months after filing) by a trademark examining attorney at the U.S. Patent and Trademark Office (“USPTO”), moved on to publication, and in the case of an application based on actual use in commerce, registered in about 7 months from the date of filing.  Unfortunately, in my experience, this is not the typical course of most applications, and in those applications filed by parties themselves, almost never the case.

Rather than moving the application to publication, the trademark examining attorney issues an initial Office Action.  This is the attorney’s critique of the application and is based on a review of the application, a quick search of registrations and other pending applications and the rules and regulations of the USPTO.  Office actions must be responded to within 6 months, or the application will be deemed abandoned.

What are the typical problems noted?  Generally, they fall into one of two categories: technical and substantive.  The technical issues include:

  1. Improper classification of the goods and services (wrong class for all of the goods or a need to separate the goods into multiple classes, with an additional fee).
  2. An unacceptable description of the goods or description of a logo (very particular standards).
  3. An unacceptable specimen showing use in commerce.

With each of these problem areas, the trademark examining attorney generally offers a cure.  They may suggest a division of the goods and services into two or more classes.  If the problem is with the description of the goods and services, they will offer suggestions as to acceptable descriptions.  Finally, they offer advice as to what an acceptable specimen would be in connection with the particular application.  If is often the path of least resistance to accept the suggestions, make the changes and move the application forward.  In these situations, the trademark examining attorney is being helpful.

Substantive problems noted by a trademark examining attorney are much more problematic.  Two of the most common are:

  1. The proposed trademark is generic (too common to serve as a trademark)
  2. Likelihood of Confusion with a registered trademark or prior filed application.

A determination that a proposed trademark is generic is difficult to overcome. For example, a proposed trademark for tissues of “Fluffy Tissues” is simply not going to fly.  Tissues is a common word for the product and the addition of the word “Fluffy” is not enough to distinguish it.  Best to rebrand (and hopefully not after filling the warehouse with “Fluffy Tissues”).  If you have already begun marketing the product, you may want to consider moving the application from the Principal Register (the highest level of registration and the most protected) to the Supplemental Register.  After 5 years on the Supplemental Register, you may be able to satisfy the USPTO that your brand of Fluffy Tissues has established itself.

Likelihood of confusion means that the trademark examining attorney, based on a review of registrations and applications, has determined that your proposed trademark is too close to another, such that confusion between the two is likely.  There are 3 typical approaches to this determination:

  1. Agree and give up.
  2. Disagree and try to persuade the trademark examining attorney that they are wrong (works sometimes).
  3. Try to work out a coexistence agreement with the prior trademark holder (can work in cases where there really is not likelihood of confusion based on what the parties actually sell or do).
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