Understanding Common USPTO Office Actions

Upon reviewing your trademark application, the United States Patent & Trademark Office might have a question, a required clarification, or, issue a refusal of your application.  If they do, they’ll contact you through what’s called an “office action.” Before getting into the specifics of some common office actions, these are the general facts you should know about them:

Office actions are not always an outright refusal of your application

While an Office Action can be an official refusal of your trademark application, it can also be the USPTO looking to you to provide further proof or reasoning of your claim to a mark.

Office actions will delay your application

The typical trademark application process takes eight months. Because office actions require a response from you (or your trademark attorney), and your application won’t move forward until the USPTO gets that response, the receipt of an office action automatically means that your trademark application will take at least two months (if not) more to process.  Therefore, it’s important to factor in the possibility of office actions and response times when you’re considering your trademark application timeline.  It also means that you should respond to the USPTO’s requests as soon as possible to keep your trademark application moving.

Types of office actions

Now that you know these general facts, let’s look at some of the most common reasons you may receive an office action after submitting your trademark application.

Section 2(d) refusal: Your trademark is too similar to an existing registration

As required by the Lanham Act (the federal trademark statute), the USPTO can not allow marks that are “likely to cause confusion” in the marketplace to register.  This is because trademarks are intended to clearly identify the source of a product or service. If the USPTO issues an office action that states that your mark may be confusing with a pre-existing trademark, it means that in their eyes, the buying public may have trouble distinguishing your offering from one already in the marketplace (and protected by an existing mark).

One thing to remember is that the USPTO does allow for similar (and even identical) marks in different, unrelated industries, provided that consumers are not likely to associate one with the other. One possible response to a “likelihood of confusion” office action is to make the case that your mark is in an industry distinct enough from an existing one that it won’t actually cause confusion.

Remember also that trademarks only apply to distinct, non-generic words and phrases. If you can prove that the potentially confusing aspects of your mark actually comprise common, generic terms or phrases, you may also be able to move forward with your application. There are no cut-and-dried rules for “confusingly similar,” but experienced trademark attorneys are more well-versed in the way the USPTO will handle such matters, and can provide assistance.

Section 2(e)(1) refusal: Your mark is too descriptive

“Merely descriptive” marks are at the weakest end of the spectrum of trademark strength (just slightly above non-trademarkable generic terms). Descriptive marks typically refer directly to qualities, features, functions, or results of a product or service. Since many different offerings may share the same features or results, the USPTO does not allow one entity to trademark them. Descriptive may also refer to individual names (or surnames) or geographic descriptors – one person may not make claim to the name of a city or region, for instance. You may make a case for a descriptive trademark being placed on the Supplemental Register, or you may attempt to prove that your mark, while descriptive, has acquired distinctiveness and association with your business and your business alone.

Requests for disclaimers

One of the most common issues in an Office Action is when an examining attorney from the USPTO asks for a disclaimer. A disclaimer involves a descriptive or generic aspect of your mark.  For example, if your trademark as “Nike Apparel” the USPTO would require a disclaimer on the generic word “apparel”.  That being said, not all disclaimer requests are cut and dry.  Sometimes a USPTO examiner may ask you to disclaim a portion of your mark that you do not want to disclaim.  In these cases you should contact a trademark lawyer to discuss the chances of successfully appealing the request for the disclaimer.

Denials because the applied-for trademark is not protectable under the Lanham Act

Aside from generic terms, the USPTO has a list of other marks that may not be acquired by any one individual. These include public symbols like government flags, as well as names of individuals that are not yourself (without that individual’s approval).

Office actions can complicate the already-dense trademark application process, and should usually be handled with the assistance of a trademark attorney to prevent further delays. If you have received an office action and would like legal assistance in replying to the USPTO, please contact us today for a free consultation and flat rate quote.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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