US Office Action in Madrid Protocol Trademark Application

Madrid Protocol trademark applications that enter the US through Section 66(a) will often encounter several issues. There may be substantive refusals and non-substantive issues. Substantive rejections may include a likelihood of confusion or merely descriptive refusal, or both. Non-substantive issues typically do not require an extensive response.

The USPTO provides a helpful timeline for Madrid Protocol applications based on Section 66(a) [see TMEP Section 1900].

What is the cost estimate for responding to a non-substantive Office Action?

If a US Office Action contains only non-substantive issues, then our firm estimates that a flat rate of $275 should be sufficient to prepare and file a response. In some cases, our flat fee may be higher if more time and effort will be required to address certain non-substantive issues (e.g., long identification of goods/services with a high number of items requiring revision). The following are non-substantive matters that may be commonly raised in a Section 66(a) Madrid Application designating the US.

Identification of goods and services

Madrid applications that originate outside the US tend to have long lists of goods and/or services. This common occurrence may be due to the fact that many Madrid countries other than the US do not require the applicant to use the mark on each product or service. If a Madrid Protocol application contains a high number of items, then there is a good probability that the US trademark examining attorney will require modifications to the identification of goods/services to conform to USPTO trademark standards. Keep in mind that the scope of the amended goods and services may not be broader than the scope of the original identification.

Description of Mark

If the Madrid application covers a design mark (i.e., not a word mark in typed standard character format), then the USPTO requires an accurate and complete description of the mark that specifies any design elements, graphic images, colors, shapes and wording [see TMEP Section 808]. In most cases, the USPTO examining attorney will propose a satisfactory description of the mark in the Office Action which the applicant can simply adopt in a response.

Type of entity of foreign applicant

Sometimes, the nature of the foreign entity is unclear. This is a simple fix where the applicant will clarify the type of entity (e.g., corporation).

Explanation of mark’s significance

It is not uncommon for Madrid trademark applications to contain foreign words or wording that sounds like a foreign language. In many cases, the Office Action may inquire as to whether the mark has any meaning in a foreign language. If an explanation is required, the applicant’s response must provide an English translation or indicate that the wording has no meaning in a foreign language.

Disclaimer of generic word(s)

If US examining attorney feels that certain words in the mark are generic, then a disclaimer may be required for that portion of the mark. In most cases, it would be more cost-effective to agree to the disclaimer rather than argue against it. In special circumstances, a mark might contain a verb, punctuation or prepositions to create a unitary phrase where a disclaimer should not be required (e.g., TIP YOUR HAT for hats; or MANGOES FOR THE EARTH for fresh mangoes).

Substantive refusals require more work and higher costs

If the mark is refused registration on substantive grounds such as likelihood of confusion or mere descriptiveness, the applicant must plan on filing a thorough response with intelligent and thorough arguments on why the rejections should be withdrawn.

A likelihood of confusion rejection may require, for example, arguments of the mark being weak due to a crowded field and high number of coexisting marks in the same class by different owners. A merely descriptive rejection may require a thorough analysis of the meaning of the mark and commercial impression of consumers.

What is the cost estimate for responding to substantive rejections?

Substantive rejections require much more than copy-and-paste responses, which explains the higher cost. Our firm’s estimate for responding to substantive trademark Office Action may range from $1,500 to $3,000 depending upon the number of nature of the rejections.

There may be options for reducing the cost of responding to a US Office Action if the substantive refusal applies to less than all the goods or services in the Madrid trademark application. Where an Office Action contains a partial refusal, an applicant can simply delete the goods or services to which the refusal applies. That way, the applicant can eventually obtain a US trademark registration without expensive arguments.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.