Protect Your Trademark, and Secure Your Business.
The United States Patent and Trademark Office (USPTO) Office Action, routinely issues Office Actions. In a trademark Office Action response, the USPTO is inviting you to offer clarification and/or present an argument. The USPTO is explaining that your application contains a defect and that for it to proceed, you should provide a trademark Office Action response.
Once you or your attorney submits an Office Action response, it will take about two to three months for your USPTO Examining Attorney to review. The Examining Attorney will review your response for completion and accuracy. If accepted, your application will move toward publication. If rejected, a final USPTO Office Action will issue. Below, I explain what happened to your application and how you can fix it.
However, before we dive into how to respond to a USPTO Office Action, we must unpack what went wrong. Each year, the USPTO’s approximately 600 trademark attorneys review over six hundred thousand trademark applications. A USPTO government attorney (called an “Examining Attorney“) reviewed your application and decided that there was either an issue with the application or the trademark chosen. They came to that conclusion after interpreting the following sources: (1) the United States Code; (2) federal case law; and (3) the Trademark Manual of Examining Procedure (TMEP). To win your Office Action, we need to understand your Examining Attorney.
Before responding to your Office Action, carefully review the Examining Attorney’s refusal. Normally, the Examining Attorney will either bullet point list near the top or use headings and subheadings for the issues that must be addressed.
Additionally, the list or heading serves as the USPTO Examining Attorney’s “roadmap”; he or she is telegraphing very clearly what they want to see addressed. However, a list or heading may not contain every issue. Therefore, carefully read the Examining Attorney’s letter to determine what he or she saw that caused the USPTO to issue the refusal letter and create a checklist.
After reviewing the Examining Attorney’s letter, carefully review your application.
You should use this time to go through the application you submitted to ensure all information is current and accurate. Additionally, review the application for the errors that the Examining Attorney pointed out. Here are some questions you should ask while going through your application:
After looking over your application, see if you can spot the issue(s) the Examining Attorney discussed in your Office Action letter.
To continue, do the following:
The Examining Attorney provided you with at least one type of the following types of Office Actions: a (1) Substantive Office Action, (2) Procedural Office Action; (3) or a Technical Office Action. Your job now is to identify which one they sent to you (sometimes, it is a combination), and prepare a response. How do you identify the correct Office Action? Below I go over all three types.
You can tell whether you face a Substantive, Procedural, or Technical Office Action by the type of response requested. If the USPTO requests anything except an argument, it is either a Technical or Procedural Office Action. If, on the other hand, the USPTO requests a legal argument, you are probably looking at a Substantive Office Action.
Below, I will go through each, starting with Substantive Office Actions, followed by Procedural and Technical Office Actions.
Almost all Substantive Office Actions (or “Major Office” Actions) are listed in 15 U.S.C. §1052 (§2 of the Lanham Act). Generally, Major Office actions require a legal response. Here are the most common major office actions.
* “Likelihood of Confusion” is perhaps the most common trademark Office Action.
Lesser known, but occasionally seen Substantive Office Actions are:
A likelihood of confusion rejection is the mother of all rejections, and, one of the most common reasons for trademark registration refusal. In plain English, the Examining Attorney is saying that there is an issue with the mark you provided because it is too confusingly similar to another trademark that is registered at the USPTO. On the other hand, if your mark is too similar to an application that is pending before the USPTO, you may receive a suspension letter and there may still be a Likelihood of Refusal waiting if another application registers.
An Office Action response is necessary to persuade an Examining Attorney that a trademark application should not be rejected because it appears similar, sounds similar, or is in the same trade channel as another trademark. The Examining Attorney wants you to put forward three things:
How can you convince the Examining Attorney to see your side, relent, and clear your application for publication? Enter the DuPont Test.
The landmark case, In re E. I. DuPont DeNemours & Co., set forth thirteen factors, but only the first two factors are relevant to your legal argument. In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).
Here is Syed Law’s roadmap to persuading your Examining Attorney to drop your Section 2(d) Likelihood of Confusion refusal.
The first DuPont factor is the degree of similarity between two marks in “appearance, sound, connotation and commercial impression.” Id. If your mark is different in appearance by even one letter, then argue that no reasonable consumer would be confused by the difference in appearance. Point to differences such as the omission or inclusion of letters, hyphens, spaces, etc.
For sound, explain how your mark differs from the cited mark. You can use The American Heritage Dictionary or Merriam-Webster to count the number of syllables between the two marks. This may sound silly, but Examining Attorneys are persuaded by Office Action responses that are thorough; leave no rock unturned.
Finally, tackle connotation and commercial impression by using The American Heritage Dictionary or Merriam-Webster to explain the differences in meaning. If one trademark includes a word not included in another mark, explain the meaning of included word or phrase. As always with a secondary source, be sure to include references such as a hyperlink to the source.
The second DuPont factor is the degree of dissimilarity between the “nature of the goods or services.” In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). What the Examining Attorney wants to see is an argument that the goods and/or services offered under the two marks are unlikely to cause confusion. See TMEP §1207.01(a) (discussing the relatedness of goods or services).
Examining Attorneys ask themselves the following question when evaluating the second factor:
A good starting point is to start with a discussion about the classes. The two marks may fall under different International Classes under the Trademark ID Manual. Next, discuss the goods and/or services themselves. Are they unique in shape, color, and/or texture?
Even if the two marks are within the same International Class, it is still possible to win. For example, items such as power drills and kitchen knives are both found in International Class 8 for “hand tools.
Additionally, think about the type of marketing involved in getting the products or services in front of consumers. Argue that consumers would not confuse the two trademarks because “trade channels” do not overlap. For example, a service selling laser printers to consumers is marketed differently than one which sells microscopes to educational institutions. This is true even though they both fall into International Class 9 for electronics and scientific instruments.
In certain cases, particularly those involving certification marks, I advise my clients to obtain a coexistence or consent agreement.
Coexistence agreements are agreements between two potentially adverse parties not to bring a suit or prejudice one another’s legal rights before a court. These pacts allow two sides to continue their business under two similar or identical trademarks provided that they do not take certain actions that could cause the public to confuse their trademark with another. See 1207.01(d)(viii).
Consent agreements are normally seen in situations involving a “certification mark.” For instance, any trademark involving the word “TEQUILA” must obtain a consent agreement. This is because “tequila” is a regulated certification mark of Mexico, and must maintain certain standards.
USPTO Examining Attorneys love to quote the Cai Diamond case and say that “[t]he proper test is not a side-by-side comparison of the marks . . . .” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018). While that might be true, take them to task and test their belief by actually putting both marks side-by-side. In my experience, they often cave when confronted with compelling evidence, particularly if the evidence is strong.
For example, I once drafted a Likelihood of Confusion response for a client whose mark contained a one-letter difference. I placed her mark next to the other mark and attached a webpage screenshot showing how her services (education software application for parents) differed from the cited mark (an affiliate marketing website ranking luxury resorts). This won over the Examining Attorney. Dig around the internet and see what comes up for the other trademark.
A mark is “merely descriptive” describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” In re TriVita, Inc., 783 F.3d 872 (Fed. Cir. 2015). What the Examining Attorney is saying, is that the words you chose for your trademark describe its qualities, purpose, or function.
For example, “BIG JET AIRLINES,” for air travel services, “ROI ANALYZER” for marketing software, “LITE HERBAL TEA” for green tea, are examples of trademarks that essentially describe the product or service they seek to sell. See Merely Descriptive Marks, TMEP §1209.01(b). Recently, the NFL’s “Washington Football Team” received a Section 2(e)(1) Merely Descriptive refusal for their entire trademark because it clearly described the American football team’s purpose.
Generally, a merely descriptive action is won in one of three ways:
If your mark has been used in commerce continuously for five or more years, your trademark has “acquired distinctiveness.” In other words, you can prove through sales receipts, marketing, advertising, etc. that your mind has “secondary meaning” outside the ordinary use of the words.
The second option, arguing that the mark is not descriptive, is the most difficult. Examining Attorneys will casually drop the dictionary definition for a word or phrase and attach supporting evidence. It is difficult to argue that a dictionary definition is untrue or inapplicable to a certain word unless the way the trademark is used bears no relationship to the description. For example, APPLE® has no relationship to “apples” as in fruits, and OLD CROW® has no relationship to birds (“OLD CROW®” is a whiskey brand). See TMEP §1209.01(a) (discussing fanciful, arbitrary, and suggestive trademarks).
The most common method of winning this type of Office Action is simply accepting an “Amendment to the Supplemental Register.” See TMEP §714.05(a)(i).
An “Amendment to the Supplemental Register” is a compromise for some Substantive or Major Office Action refusals that is made in exchange for faster trademark registration. The Principal Register is the top priority register at the USPTO. Marks that lack distinctiveness, have not acquired secondary meaning, or which run afoul of some of §1052 rules are ineligible for the Principal Register. See 15 U.S.C. §1052 (§2 of the Lanham Act). However, those marks may still register on the Supplemental Register.
Usually, the Examining Attorney will give something called an “Advisory to the Supplemental Register.” In essence, what the USPTO is saying is that instead of providing a full-blown legal Office Action response, you can simply elect to register your mark on the Supplemental Register. While the Supplemental Register is slightly weaker (e.g., you cannot inform Customs and Border Patrol to stop importing infringing marks), you may re-file after five years and move to Principal Register. If you successfully register on either the Principal or Supplemental Register, you get to place the “®” next to your mark.
A geographically descriptive mark attempts to tie a geographic location to a good or service sold under a trademark. The primary federal law that governs trademarks is called the “Lanham Act.” The drafters of this law understood that trademark law could not incentivize certain types of unfair competition. One unfair practice involved taking exclusive ownership of the name of a town, suburb, or city for a particular trade (think “Original Atlanta Bagels,” or “The Seattle Brewery”).
Taking geographic descriptors makes it difficult for others businesses in the same industry and location to compete. Accordingly, the drafters, intent on reducing this practice added the “Geographically Descriptive” refusal to the Lanham Act.
A trademark is primarily geographically descriptive if:
See In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959 (Fed. Cir. 1987); see also 15 U.S.C. §1052 (§2 of the Lanham Act).
Like the Merely Descriptive refusal above, the three ways to win this Office Action involve arguing either: (1) that the mark has acquired distinctiveness through five or more years of continuous use (i.e., that consumers have associated a “secondary meaning” to it outside its obvious commercial connotation); (2) argue that the mark is not geographically descriptive; or (3) accept an Amendment to the Supplemental Register.
A Primarily a Surname refusal is a USPTO Office Action based upon whether the primary significance of the trademark involves the use of a surname (i.e., the last name). See In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832 (CCPA 1975). Like the Geographically Descriptive refusal, the drafters intended to avoid situations where the use of a surname in an industry made it unreasonably difficult for others to compete.
Examining Attorneys routinely cite the frequency with which last names appear on the Whitepages or Lexis-Nexis. Winning a Primarily a Surname Office Action by persuading the Examining Attorney that: (1) the trademark’s primary significance is not an association with a surname; (2) showing proof, such as sales, that the mark has acquired distinctiveness; or (3) Amendment to the Supplemental Register.
Above, I discussed the Amendment to the Supplemental Register, below I explain how you can use the Supplemental Register to win.
Procedural Office Actions result due to an error with respect to the Trademark Manual of Examining Procedure (“TMEP”). In order to fix a Procedural Office Action, review the Office Action Letter, enter the words “UPSTO TMEP” including the appropriate section into Google Search, and review the appropriate subsection. Below the most common Office Actions are reproduced
A specimen refusal is a rejection due to the failure to follow mandatory guidelines for appropriate specimens. Here, a “specimen” is proof submitted to the UPSTO showing the use of a trademark in commerce. This refusal is issued in situations where:
The solution to a Specimen Refusal will depend upon whether goods or services are provided.
For goods, you may include a photograph of the trademark associated with the goods: (1) affixed to the goods; (2) on packaging or labels; (3) at a point-of-sale display (e.g., an eCommerce website). See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).
For services, you respond to the Office Action by showing proof of the trademark in association with services in (1) advertising and marketing material; (2) business signage, letterhead, business cards; or (3) the point at which the services are rendered (e.g., a website). See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
A good Office Action response to a Specimen Refusal involves reviewing the appropriate specimen for either goods or services (see above). Next, the Applicant should clearly associate the goods or services depicted in the specimen with the trademark. If possible, the Applicant should explain what the specimen is (e.g., a webpage, packaging, advertisement). The explanation should include items depicted. For example, an online point-of-sale for payment, box wrapping, or an advertisement for medical services. Finally, the specimen must explain “in commerce” sale of the goods and/or services. “Use in commerce” is a legal test, encompassing trade that Congress may regulate.
In addition, if your specimen is not ready, and you filed a Section 1(a) Use In Commerce application, your Examining Attorney may allow you the option to switch to a Section 1(b) Intent to Use application. This is prudent for clients that need additional time to show proof of use. However, the key to all specimen refusal Office Action responses is to ensure that your trademark is very clearly associated with the goods/services you are selling (or which you intend to sell). The downside is that by switching to Section 1(b), the USPTO will charge $100 per International Class of goods or services in the near future.
Identification and Classification refusals arise if the goods and/or services are not appropriately identified and placed within their appropriate categories. This is frequently an issue with the rise of low-quality trademark filing mills. These services purposefully use the more expensive TEAS Standard application even when that application is not necessary because the cost is borne by the client. This leads to a higher rate of refusals and unhappy clients.
“Classification” refers to the 45 International Classes. Each good or service sold under your trademark falls into one or more International Classes. Each International Class is the same fee of either $250 for a description found in the Trademark ID Manual, or $350 for a custom description using the TEAS Standard application.
“Identification” references the description provided for each International Class of goods or services. Issues frequently arise when applicants hire lesser-quality trademark filing services because those services simply type in the description provided instead of using the Trademark ID Manual. This leads to additional unforeseen costs to Clients in the future. Typing in a general, vague, or over-broad description will lead to a refusal. This leads us to the “Multi-Class Requirement” refusal.
A Multiple Class Requirement refusal arises where an applicant uses the TEAS Standard form, and inserts a custom Identification (or has someone else do it for them). The custom description will involve an Identification that spans more than one Classification. In other words, an individual will pay only $350 to the USPTO mistakenly thinking he or she may provide a broad description that covers more than one International Class when that amount is insufficient.
Of course, this is not how it works. The USPTO requires that the Applicant pays for each International Class. Therefore, an Applicant cannot pay for one International Class and run around the USPTO requirement for several International Classes by providing an Identification that encompasses more than one International Class.
Here is a real-life example; a Client used the following identification (i.e., “description”) for their vineyard: “Wine grape grower, winemaker, and wine tasting room establishment” and paid for one International Class—Class 33. Can you see the problem?
Based upon what the Client provided, the Examining Attorney issued a refusal for a multi-class requirement explaining that the Client’s payment for one International Class was insufficient because the identification (i.e., the description, fell into a total of four possible International Classes!
Wine falls into International Class 33. Winemaking, namely bottling wine falls into International Class 39. Wine tastings fall into International Class 41. Wine bars fall into International Class 43. If the Client wanted the three additional Classes, the Client would need to pay at least $1,050 ($350 TEAS Standard Fee x 3 total International Classes ).
If your trademark identifies a living person by name or includes their likeness by the use of their portrait or signature, you must provide their consent. This is true even if it is conceivable that the person is alive. The rationale behind this procedural requirement is simple: The USPTO wants to protect the privacy interest of an individual concerning their name and likeness during their lifetime. The purpose’s rule is to ensure that an individual’s name or likeliness is not misappropriated.
The most common types of refusals issued are for:
To win this refusal, if a person is identified by name, you must obtain their written consent. Written consent must be in writing, signed by the person whose name is on the trademark, using the following language: “The name, portrait, and/or signature shown in the mark identifies a living individual whose consent to register is made of record.” TMEP §813.01(a). Respond to the Office Action by providing written consent to your Examining Attorney through the TEAS system.
Within the Minor Office Action category is a second subset—Technical Office Actions. The more common Technical Office Actions are: (1) disclaimer required; (2) color claim; (3) mark does not match specimen.
A refusal for “Disclaimer Required,” “Disclaimer Necessary” or simply “Disclaimer” is a request from the Examining Attorney to disclaim certain words within a trademark. Applicants must disclaim “[u]nregistrable component[s] of a mark otherwise registrable . . . .”. and a person may “voluntarily disclaim . . . a mark sought to be registered.” 15 U.S.C. §1056(a); TMEP §1215.07. Simply put, a disclaimer is a word that standing alone is not registrable.
For example, if a person wants to file for an Android application called HONEYBEE SOFTWARE, the USTPO would require a disclaimer for the word “SOFTWARE” since the word is generic in this context.
For instance, “Bank,” “Company,” “Retail” and “Store,” are common words that require a disclaimer. Your Examining Attorney likely wrote out: “No claim is made to the exclusive right to use [the unregistrable word(s)] apart from the mark as shown.”
Respond to the Office Action by entering the words that must be disclaimed.
The USPTO simply needs a translation. Respond to the USPTO Office Action by providing the English equivalent translation of the word, if applicable. If no translation exists, you may explain so to the Examining Attorney.
In this particular USPTO Office Action, the USPTO detected an inconsistency between the trademark’s owner and the entity selected. This Office Action is issued if an Applicant enters the individual’s name under “Owner of Mark,” but selects “Limited Liability Company” or “Corporation” under “Legal Entity Information.” It may also occur if the Applicant enters a corporation (e.g., Mitchell Consulting Inc.), but selects “individual.”
Responding to an issue with a trademark that is different on a drawing and/or specimen is straightforward. This USPTO Office Action commonly arises where the Applicant initially submits a mark on the application (the “Drawing”), but after some time the Applicant submits a different mark for the specimen.
Some USPTO Office Actions are entered into the TEAS system and are not issued to you; generally, these are divided into Nonfinal and Final Office Actions.
As the name states, a nonfinal Office Action is not a final disposition on the merits of a trademark application. A nonfinal Office Action requires an answer within six months. If you receive a nonfinal USPTO Office Action, you must completely respond to each legal issue raised by an Examining Attorney. If, for any reason, the Examining Attorney raises a new issue for the first time after your nonfinal Office Action response, you must respond.
By contrast, a final Office Action arises in situations where your Examining Attorney has already raised all issues with your application, and you did not satisfactorily respond. You may still respond to the final USPTO Office Action. It will be the final time to do so with your particular Examining Attorney during the application procedure. Again, the response to the trademark Office Action must individually satisfy each concern the Examining Attorney raised. Should the Office Action response fail to do so and the Examining Attorney does not relent in withdrawing their refusal, the applicant may appeal to the Trademark Trial and Appeal Board (TTAB). It is possible to concurrently respond to the final Office Action and appeal.
There are other types of “Office Actions” which may arise.
An Examiner’s Amendment means that the Examining Attorney made a minor change to your file after communicating with you. The Examiner’s Amendment is typically issued after speaking with you or your attorney by phone or email. There is no need to respond to an Examiner’s Amendment.
A Notice of Incomplete Response is a formal notice from the USPTO explaining that your application is missing a signature or other formality. You must respond either within 30 days of the issue date or within your six-month window.
A Priority Action is a written confirmation that your Examining Attorney communicated with you or your representative about specific legal requirements for your application. A Priority Action will list legal issues with your application, and how you can resolve these issues. Examining Attorneys issue Priority Actions to expedite your application. The deadline to respond is within six months from issuance.
The USPTO will issue a Suspension Letter, which is a hold on your application, pending the outcome of events outside your application. Suspension Letters will issue for your application if there is already another application pending for the same or similar name. This is the only type of USPTO Office Action that does not require a response. However, you may respond to a Suspension Letter, or you may wait for matters outside of your application to resolve.
For instance, I take a proactive approach and submit a USPTO Office Action response to Suspension Letters when it is strategic to do so. For instance, I have responded to a Suspension Letter that was held up pending two applications. One application was “abandoned,” and its owner could not file a Petition to Revive. The second application was not confusingly similar, and so I brought this to the Examining Attorney’s attention.
A suspension inquiry is a request to provide information about the reason for your suspension. Sometimes, the USPTO database may not contain all the relevant information about why your application was suspended. Your truthful response will allow the Examining Attorney to determine if your application should remain suspended or move forward.
Generally, there are three or so ways to save your trademark from a USPTO Office Action: (1) Speak to the USPTO; (2) attempt an Office Action response yourself (not advised); or (3) speak to a qualified Trademark Office Action Attorney.
The USPTO is a federal agency, and as such the Examining Attorneys at the USPTO are not your attorneys. However, they are generally friendly and willing to provide guidance up to a point. They may help direct you to resources that could help. However, they cannot provide legal assistance.
In short, contacting an experienced Office Action trademark attorney is the easiest, quickest, and cost-efficient solution. Most trademark Office Action attorneys charge competitive flat-fee rates and can tell you their cost upfront.
However, you may wonder why I say it is the most “cost-efficient solution.” The reason why it is less expensive is due to the difficulty of winning trademark Office Actions. It is also due to the success rate difference between going it alone and hiring an attorney. The reason why hiring a trademark Office Action attorney is advantageous is three-fold:
As such, it is prudent to hire a trademark attorney Office Action Attorney. Even if you do not decide to go with my firm, please contact a licensed trademark attorney and not a filing company.