Madrid Trademark – US Office Action: How to respond [66(a)]

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. […]

Read More

What are inherently distinctive vs. merely descriptive trademarks?

When you’re contemplating a name for your new business or product line, it’s common sense to avoid words that are too close to an existing trademark used for similar goods or services.¬†However, likelihood of confusion is not the only factor to consider when adopting a new trademark. You should also consider the inherent distinctiveness of […]

Read More

What are substantive vs. non-substantive trademark Office Actions?

What is a non-substantive trademark Office Action? Non-substantive trademark Office Actions are letters issued by USPTO examining attorneys that do not necessarily refuse registration of the mark. Such Office Actions typically do not require significant legal research or argument. For example, any of the following reasons may lead to a non-substantive Office Action (what I […]

Read More