5 Tips If Your Trademark Application Draws An Office Action

Trademark is one of the four types of intellectual property, and the one perhaps most visible for every company because it protects the company’s brand. Many entrepreneurs in the early stage of business try to avoid using an attorney, opting instead for do-it-yourself or economical online services – which includes filing a trademark application with the US Patent and Trademark Office. However, they get stuck if the trademark office’s examining attorney responds with a question or denial. If this happens to you, don’t panic. Get a cup of coffee and work through your options with these five tips.

1. Read the office action letter completely

The examining attorney may have raised multiple problems, and each issue raised will be in a separate section of the office action letter. First the issue will be stated, then the law covering that issue will be given, and then facts will be presented that are supposed to show how the examining attorney believes your situation violates the rules and why he drew his conclusion.

To be methodical in your response, plan your reply to each issue. Sometimes the examining attorney will give you a suggestion for how to proceed, but many times you will be totally on your own. You are allowed to use law, facts and arguments to make your point – but you must address each of the examining attorney’s concerns. Now, let’s look at the most common reasons for drawing an office action.

2. Is There Likelihood of Confusion?

Trademark examining attorneys first look for conflicts with an existing trademark registration or application. Conflicts are unlikely if you performed a search of existing trademarks before filing your own application. Near the beginning of the office action letter, look for this phrase:

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration…

If you see the above sentence, breath a sigh of relief and continue with the next step below. If instead you see this sentence:

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks…

…then there could be a serious problem, and skip to No. 5.

3. Go to the USPTO website

Go to the USPTO website and look through the response forms. Here’s the direct link to do that: https://www.uspto.gov/trademarks/teas/response_forms.jsp

These forms will tell you plenty about the mechanics of replying to the office action letter. Every kind of office action has a corresponding form or portion of a form. To practice, you can fill out the response forms all the way up to the end, but be sure to stop before submitting the form.

This step is meant only to familiarize yourself with the response process. Once you understand how the forms work, you will be set for the next step of finding your specific problem. Go to the beginning of the response forms and take out your office action letter for the next step of matching your problem to the response forms.

4. The Common Problems for Refusing Your Trademark

There are many things that can go wrong, and unfortunately I can’t cover all of them here. Let’s concentrate on the common reasons for refusing your trademark, and how should you respond to them.

Merely Descriptive or Merely a Surname

Perhaps the most common problem do-it-yourself filers encounter, is that they try to get a trademark on a phrase that describes their good or service. For example, if you have a store that sells bird food, you might be delighted to find that WildBirdTreats.com is an available url, so you take it and name your online store “Wild Bird Treats.” But if you try to get a trademark on that name, the USPTO will likely send you an office action that says something like

Refusal under Trademark Act Section 2(e)(1) – Mark is Merely Descriptive
Here’s an example of that office action: https://tsdr.uspto.gov/documentviewer?caseId=sn77871669&docId=OOA20100224162225#docIndex=1&page=1

A similar problem is using a term that is a common surname. The trademark office will not issue you the primary form of trademark on “Smith Company” because there are so many other people named “Smith” who might want to start a company and need to use that name. Here’s an example of just such a problem: https://tsdr.uspto.gov/documentviewer?caseId=sn77047936&docId=OOA20070328203310#docIndex=4&page=1

Both “Merely Descriptive” and “Merely a Surname” refusals mean that your mark cannot be listed on the Principal Register. According to the trademark rules, certain kinds of problems, including some marks that are “merely descriptive,” and some marks that are “merely surnames” can still get listed on the “Supplemental Register.”

Listing on the Supplemental Register does not have all the advantages of listing on the Principal Register, but you get to use ® with either listing. Here is a link to a more in-depth article on the difference between Principal Register and Supplemental Register: https://www.inta.org/TrademarkBasics/FactSheets/Pages/PrincipalvsSupplementalRegister.aspx

The response forms (see No. 3 above) show you how to convert your application to the Supplemental Register is you receive this reason for denial.

Name of a living person

If you use the name of a person in your company’s name, you need permission from that person. Of course the most likely name you will use is your own. Use the response forms (or follow the examining attorney’s instructions) to submit the proper documentation to tell the examining attorney that you give permission for using your own name.

Insufficient specimen

The specimen is required to show how you are using the mark to create a link between your company and the good or service you provide. The perfect example of a specimen on a good is a price tag that has your mark on it attached to your good. Of course if you sell services this is not possible.

For services, your best specimen is a price sheet, quote sheet, or marketing material that shows a similar link between your services and your company together with an offer to sell those services. Be sure that you properly coordinate the product description you enter in the trademark application with the description on your specimen. The Trademark Office has a short video about specimens: https://www.uspto.gov/trademarks/process/TMIN.jsp.

The response forms to cover this objection ask you to submit a new specimen. Do not just create a new marketing piece or price sheet – you need a specimen that shows the mark used in commerce as of the “first use” date on your application. If you don’t have such proof of use in commerce going back to that date, your best option is to convert your application to an “Intent To Use” application filing status (the 1(b) status on the response forms), then file a statement of use that uses your newer marketing piece or price sheet. This will cost you an extra filing fee and your date of first use will be adjusted to your first filing date, but you will likely achieve the trademark registration you sought.

5. Hire An Attorney

If you receive a denial because of conflict with an existing trademark registration or application, you have very few options of getting to use the mark as your own. None of them are easy to achieve without legal representation. If you are a small business that’s just starting, it is worth a short conversation with an attorney at this point to determine what your options might be. For example, if you have proof that you used the mark in commerce before the owner of the competing mark, you may be able to file a petition to cancel the owner’s mark, but that process is akin to litigation for which you’ll want an attorney. Alternatively, you may think the denial is an error and you to challenge it. Again, you should seek legal counsel.

The bottom line is that receiving an office action from your trademark application isn’t the end of the world for the do-it-yourself-er. Although you’ll need to think a little like a lawyer, consider taking a stab at it. Perhaps you can get just a little legal advice, then tackle the job yourself.

Be methodical and thorough in your response, and you may have a chance to get that trademark on your own after all. If you don’t want the hassle, hire an attorney to handle this for you and concentrate on selling your product or service.

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