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 partial rejection?

In the majority of cases, the basis for the partial refusal will likely 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. The examining attorney believes a likelihood of confusion exists with a portion of the goods or services in your trademark application. The remaining items in your identification of goods/services are fine.

How to respond to partial refusal

You have a few options in responding to a partial trademark 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;
  3. Do nothing; or
  4. File a Request to Divide.

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. Even without a response, your trademark application should proceed with the allowed goods and services. Keep in mind that you would have to wait until after the 6-month period for response lapses before your trademark application can proceed.

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. Another option is to file a Request to Divide which cause your original application to split into two applications. The allowable goods/services will forward without delay while you can argue against the refusal with respect to the rejected items.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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