What is a partial refusal?

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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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
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Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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