What is a partial refusal in a trademark Office Action?

A trademark Office Action with a partial refusal can be a mix of good news and bad news. The bad news is that a portion of your mark is being rejected. The good news is that the remainder of your trademark application is acceptable. In most cases, the partial rejection pertains to a subset of the goods or services identified in the application.

What is the basis of the refusal?

In the majority of cases, the basis for the partial refusal will be a likelihood of confusion with one or more registered marks. The reason why the refusal is partial is because the rejection applies only to a portion of the goods or services in your trademark application which the examining attorney believes will cause a likelihood of confusion with the cited registration(s).

How to respond to partial refusal

You have a few options in responding to a partial refusal:

  1. Delete the goods and/or services objected to by the trademark examining attorney;
  2. Argue against the partial refusal with respect to certain goods or services; or
  3. Do nothing.

What happens if you fail to respond to partial refusal?

If the Office Action consists of only a partial refusal and nothing else (e.g., no other rejections, requests to modify identification of goods/services, requested modification to description of mark, etc.), you have the option to do nothing. The result will be partial abandonment that applies only to the particular goods/services that were rejected.

Should you argue against the partial rejection?

It depends on how important the rejected goods or services are to the applicant. If the rejected goods/services are significant and the likelihood of confusion reasoning appears weak, then it may be worthwhile to submit arguments. You always have the option to remove the objected goods/services in response to a final Office Action.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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