Trademark Office Action

What Is A USPTO Office Action?

A USPTO Office Action is an official communication sent from the United States Patent and Trademark Office to a trademark applicant that identifies legal issues or concerns regarding a trademark application. These concerns may be procedural, substantive, or both, and are typically related to the registrability of the applied-for trademark.

An Office Action may be issued when a trademark examining attorney identifies potential issues with the application, such as likelihood of confusion with a pending or registered trademark, descriptiveness, or other factors that could prevent registration. The applicant is then required to respond to the Office Action within a specified time frame, usually three (3) months, to address the concerns raised and provide any necessary clarifications or amendments.

Failure to respond to the Office Action within the allotted time can result in the abandonment of the trademark application. To successfully overcome the issues raised in an Office Action, applicants often need to provide legal arguments, additional evidence, or make changes to their application.

Not all trademark applications process without a problem. If you or your business has been issued an office action from a USPTO examining attorney, let us review your trademark case and determine what type of response is appropriate. The following discussion briefly explains a few of the USPTO Office Actions that an examining attorney may send to an applicant during the trademark registration process.

Important USPTO Update: As of December 3, 2022, trademark applicants have only three (3) months (instead of six (6) months) to respond to office actions issued during the examination of trademark applications filed under sections 1 or 44. Applicant’s may request one three-month extension per office action for an additional $125 filing fee.

Types of USPTO Office Actions

The following discuss provides a brief overview of the different types of USPTO Office Actions that are issued by examining attorneys:

• Non-Final Office Actions: These are the initial office actions that the examining attorney sends if there are issues with the application. They can relate to procedural matters, like needing more information about the goods or services, or substantive matters, like a likelihood of confusion with a registered mark.
• Final Office Actions: If an applicant’s response to a non-final Office Action doesn’t overcome all the refusals or requirements, or if the examining attorney raises new issues, they may issue a Final Office Action. This means that the applicant’s options are limited to a few specific actions, like filing an appeal or providing new evidence.
• Examiners’ Amendments: These are written confirmations of minor corrections or changes that the examining attorney and the applicant agree upon during a phone or email conversation. They do not require a response from the applicant.
• Priority Action: These are Office Actions that the examining attorney issues after a conversation with the applicant or their attorney. They are used to speed up the examination process and do not need a formal response if the applicant agrees with the proposed amendment or requirement.
• Suspension Inquiry: These are issued when an application has been suspended, and the examining attorney is requesting information to see if the application should remain suspended or if it can proceed.
• Suspension Notice: These are issued to suspend the action on an application. This typically happens when the outcome of the application depends on the outcome of another proceeding, such as another pending application or a civil court proceeding.
• Post-Registration Office Actions: These occur after a trademark has been registered. The Post-Registration division may issue an Office Action if there are problems with a maintenance document or a request for an amendment or correction.

Each of these types of Office Actions has different implications and requires different types of responses, so understanding them is key to successfully navigating the trademark registration process.

Most Commonly Issued Office Actions

One of the most frequent legal issues cited by USPTO examining attorneys is likelihood of confusion, wherein the proposed trademark is too similar to an existing registered trademark, potentially causing consumers to mix up the source of the goods or services.

Another common issue is descriptiveness or genericness. If a proposed trademark merely describes the goods or services it represents or is a term generally used in the relevant industry, it may be rejected for being merely descriptive or generic. For a trademark to be registered, it typically needs to be distinctive, meaning that it can identify and distinguish the source of the goods or services.

Sometimes, a trademark might be refused if it includes geographically descriptive or deceptively misdescriptive terms. If a trademark is geographically descriptive, it might be refused because it merely describes the place where the goods or services originate. If a trademark is geographically deceptively misdescriptive, it might be refused because it could falsely suggest that the goods or services come from a particular location.

Office Actions might also cite issues with the applicant’s specimen of use. This refers to the real-world example of how the trademark is used in commerce that the applicant must submit. If the specimen doesn’t show the trademark used in a trademark manner, it can lead to a refusal.

Lastly, issues can arise from the identification of goods or services. If the description is too broad, unclear, or indefinite, the examining attorney might ask for a more specific description to properly classify the goods or services.

Each of these issues requires a different response and may involve legal arguments, additional evidence, amendments to the application, or some combination of the above.

Likelihood of Confusion Trademark Refusal

A Section 2(d) likelihood of confusion trademark refusal is a common type of objection issued by the USPTO examining attorney in an Office Action. It means that the examining attorney has determined that the trademark you’re trying to register is too similar to an existing trademark or a trademark in a pending application, and this similarity might lead consumers to mistakenly believe that the goods or services represented by the two trademarks come from the same source, or are affiliated or connected.

The determination of a likelihood of confusion isn’t just based on whether the two trademarks look or sound alike; it also considers the similarity of the goods or services, channels of trade, conditions under which sales are made (impulse vs. careful, sophisticated purchasing), and the fame of the prior trademark, among other factors.

If the USPTO issues a likelihood of confusion refusal, the applicant can respond in a variety of ways, including by arguing that the trademarks aren’t as similar as the USPTO believes, or that the goods or services are marketed in different channels of trade to different classes of consumers. In some cases, the applicant might need to change their trademark or agree to limit their goods or services to overcome the refusal.

Surname Trademark Refusal

A Section 2(e)(4) surname refusal is a specific type of trademark objection issued by a USPTO examining attorney. It refers to the refusal to register a trademark because the trademark is primarily merely a surname. The basis for this kind of refusal is Section 2(e)(4) of the Trademark Act. The USPTO considers a term to be primarily merely a surname if the public would perceive the term as primarily a last name rather than as identifying a source of goods or services.

A surname is a family name or last name that is passed down from generation to generation. It is typically shared by members of a family and is used in many cultures to show familial connections. In many Western cultures, the surname is typically placed at the end of a person’s full name, following any given or middle names. However, the placement of surnames can vary by culture. For instance, in many East Asian cultures, the surname traditionally precedes the given name. The use and formation of surnames can vary greatly around the world, reflecting cultural, social, and legal practices.

In responding to a Section 2(e)(4) surname refusal, the applicant can argue that the primary significance of the mark is not that of a surname. For instance, the applicant may demonstrate that the term has other recognized meanings in everyday language, or that it’s a term of art in the relevant industry.

Another potential argument is that the mark has acquired distinctiveness or secondary meaning. This means that, through extensive use of the mark in commerce, the public has come to recognize the mark as a source identifier for the applicant’s goods or services, and not merely as a surname.

The applicant might also argue that the term, while being a surname, is not primarily merely a surname because it is rare. Evidence can be provided to show that few people have the surname in question.

The success of these arguments can depend on many factors, and we suggest contacting one of our trademark attorneys to ensure an appropriate and compelling response is submitted in response the surname trademark refusal.

Descriptiveness Trademark Refusal

A Section 2(e)(1) descriptiveness refusal is a type of objection issued by a USPTO examining attorney. According to this section of the Trademark Act, a trademark can be refused registration if it is deemed merely descriptive, meaning it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. The rationale behind this rule is that other businesses may need to use such descriptive language to accurately describe their own goods or services, and one business should not have exclusive rights to it.

When an applicant receives a Section 2(e)(1) refusal, there are several potential avenues for response. One common approach is to argue that the trademark is not merely descriptive of the goods or services. This could involve demonstrating that the trademark doesn’t directly convey information about a quality, feature, function, or characteristic of the goods or services.

If the trademark has been in use for a considerable period of time, another strategy is to claim that the trademark has acquired distinctiveness, sometimes referred to as “secondary meaning”. This means that, despite being descriptive, consumers have come to recognize the trademark as a source identifier for the applicant’s goods or services. Proving this typically involves providing evidence of long-term use, extensive advertising, consumer surveys, or other evidence that demonstrates the trademark’s recognition among relevant consumers.

Another potential argument, albeit less common, is that the trademark is suggestive rather than descriptive. Suggestive trademarks require a step of imagination, thought, or perception to reach a conclusion about the nature of the goods or services, while a merely descriptive term immediately conveys knowledge of a quality or characteristic of the goods or services.

Given the complexity of these arguments, we suggest contacting one of our trademark attorneys to assist with the response to a Section 2(e)(1) refusal.

Ornamental Trademark Refusal

A Section 1, 2, and 45 ornamental refusal is a type of objection issued by a USPTO examining attorney. The refusal is issued when the examining attorney determines that the proposed trademark is merely a decorative or ornamental feature of the goods, rather than serving to identify and distinguish the applicant’s goods from those of others and to indicate the source of the goods, as required by Sections 1, 2, and 45 of the Trademark Act.

For example, a large, stylized phrase or slogan prominently displayed on the front of a t-shirt might be considered ornamental use, as the public would perceive it as part of the t-shirt design rather than a trademark indicating the source of the t-shirt.

In response to an ornamental refusal, the applicant has several potential avenues to argue. One common strategy is to show that the trademark is not merely ornamental but also serves a trademark function. This could be demonstrated by providing evidence that the trademark appears on tags or labels, in advertising materials, on websites, or in other places where consumers would expect to find a trademark.

Another argument could be that the trademark has acquired distinctiveness or secondary meaning. This means that, despite the ornamental nature of the trademark, the public has come to recognize it as a source indicator for the applicant’s goods. Evidence of long-term use, substantial sales, significant advertising expenditures, and consumer recognition can be used to support this claim.

Alternatively, the applicant could agree to amend the application to seek registration on the Supplemental Register (if the trademark is in use in commerce) or seek registration under Section 2(f) based on evidence of acquired distinctiveness. trademarks that are merely ornamental and do not function as a trademark may be eligible for registration on the Supplemental Register, and later, if they acquire distinctiveness, they might be eligible to move to the Principal Register.

Requirement For An Accurate Identification of Goods Or Services

When a USPTO examining attorney issues an Office Action in connection with the requirement for an accurate identification of goods or services, it means that the attorney has identified a problem with how the goods or services associated with the trademark are described in the application.

The identification of goods and services in a trademark application is critically important because it defines the scope of protection for the trademark. Therefore, it needs to be specific, clear, accurate, and concise, and it must fall within the USPTO’s Acceptable Identification of Goods and Services Manual.

The issues raised by the examining attorney could involve a broad range of concerns. For example, the description might be too vague, overly broad, or indefinite, which could make it difficult to determine the nature of the goods or services. Or the description might not be specific enough, using general terms where more detail is required to accurately describe the goods or services.

In response to such an Office Action, the applicant must clarify or amend the identification of goods and services to meet the USPTO’s requirements. This might involve providing a more detailed description, specifying the nature of the goods or services, or using more precise terminology.

It’s worth noting that any changes made to the identification of goods or services cannot broaden the scope of the identification beyond what was initially filed. In other words, the description can be clarified or narrowed, but not expanded.

The process of accurately identifying goods or services can be complex, and it might be beneficial to seek legal advice to ensure that the description is both accurate and sufficiently broad to provide the desired scope of protection.

Requirement To File In More Than One Class Of Goods And/Or Services

When a USPTO examining attorney issues an Office Action related to the requirement to file in more than one class of goods and/or services, it means that the attorney has determined that the goods and/or services listed in the application fall into more than one class according to the international classification system used by the USPTO.

The international classification system is a system that categorizes all goods and services into distinct classes. For example, Class 25 includes clothing, while Class 9 includes computer software. When you apply for a trademark, you need to specify the class or classes that your goods or services fall into. If your application includes goods or services that fall into more than one class, you need to specify all the relevant classes.

If you’ve only paid for one class but the examining attorney determines that your goods or services fall into multiple classes, you’ll receive an Office Action requiring you to either restrict your goods or services to a single class or pay additional fees for the additional classes.

In response to such an Office Action, you can choose to either pay the additional fees required to cover all the classes identified by the examining attorney or amend your application to narrow down your goods or services to fit into a single class. You can also argue against the examining attorney’s determination if you believe your goods or services do indeed fall into only one class.

Requirement To Disclaim A Portion Of The Proposed Trademark

When the United States Patent and Trademark Office (USPTO) examining attorney issues an office action in connection with the requirement to disclaim a portion of the proposed trademark, it essentially means that the attorney has identified a segment of the trademark that cannot be exclusively claimed due to its generic or merely descriptive nature.

Trademarks, as a rule, must be distinctive and serve to identify the source of goods or services. However, certain terms or phrases within a proposed trademark may be common, generic, or merely descriptive. These elements cannot be monopolized by any one entity because doing so would unfairly hinder competition.

For example, in a trademark application for “Black Ivory Coffee”, the word “Coffee” is seen as generic. In such a case, the USPTO might require the applicant to disclaim exclusive rights to this term, while the unique combination of these terms as “Black Ivory Coffee” could still serve as a trademark.

When an examining attorney issues an office action requiring a disclaimer, the applicant must respond within three (3) months. The response should either include the requested disclaimer, or provide a legal argument as to why the disclaimer is not necessary. If the applicant does not respond in time or fails to persuade the attorney, the trademark application can be refused.

It’s important to note that a disclaimer doesn’t remove the element from the trademark or affect its use in the marketplace. It simply acknowledges that the applicant cannot prevent others from using the disclaimed term in their own trademarks.

Specimen Refusal

When a USPTO examining attorney issues an office action in connection with a specimen refusal, it indicates that the attorney has found issues with the proof of use, or ‘specimen’, that the trademark applicant has submitted. This proof of use is meant to demonstrate that the trademark is being used in commerce in the way specified in the application.

A specimen could be a label, tag, or packaging that shows the trademark on the actual goods or it could be a website screenshot, brochure, or advertisement for services that displays the trademark. The goal is to show the mark as it is seen by the public, in its normal course of trade.

There could be several reasons why a specimen might be refused. For instance, it might not clearly show the trademark being used in connection with the goods or services listed in the application. Alternatively, the specimen might not be deemed acceptable if it doesn’t match the drawing of the trademark provided in the application, or if it seems merely ornamental rather than serving as a brand identifier. The specimen might also be refused if it appears to be digitally altered or mocked up rather than reflecting actual use in commerce.

When an examining attorney issues an office action with a specimen refusal, the applicant must respond within six months. This response can either provide an alternative, acceptable specimen, or argue against the refusal. If the applicant fails to respond or the response does not adequately address the refusal reasons, the application can be abandoned.

It’s essential to note that the requirement for a suitable specimen is a key part of U.S. trademark law. This is because the central purpose of a trademark is to identify the source of goods or services, and a specimen serves to evidence that the mark is fulfilling this role in the marketplace.

USPTO Office Action Response Deadlines

As of December 3, 2022, the USPTO examining attorney must receive your response to an office action within three (3) months from the date it issued for the response to be considered “timely.” Some types of office actions have a shorter deadline. Therefore, it is very important that you carefully read your office action to determine the specific deadline for the response. In some situations, the USPTO may grant you one three (3) month extension to respond to an office action for an additional $125 filing fee.

Do You Need Trademark Assistance?

If you have received an office action, please contact our office as soon as possible. In order to appropriately and accurately respond to all issues set forth in your office action, there may be considerable research and investigation that will need to be conducted. Further, if our trademark attorneys need to draft a formal response to your office action, there may be several rounds of review that need to be performed before submitting your response to the USPTO. For those reasons and others, the more time we have to respond to your office action before the three (3) month deadline, the better!