What are smarter ways to respond to trademark Office Actions?

Though you hate to see them, Office Actions are fairly common in USPTO trademark applications. While much can be done upfront to minimize the risk of a trademark refusal, you sometimes get a trademark rejection no matter how hard you tried to avoid it. If and when it happens, a strategy for a smarter trademark response will serve you well.

The effectiveness of your approach will depend upon the particular refusals you must overcome. For example, a merely descriptive refusal will require a different approach than a likelihood of confusion rejection.

What is a smarter approach to a likelihood of confusion refusal?

In response to a likelihood of confusion rejection, you always have the option of submitting arguments. But, can you do something more than argue that the marks are not confusable? Take a closer look at the cited trademark registrations and any prior pending applications.

Initially, check if any cited registered marks have upcoming deadlines for renewals. If so, keep an eye on whether the registrant renews their trademark registration on time.

Next, consider the possibility of a consent agreement with the registration owner. Leverage is key to motivating other trademark owners to agree to coexistence. For example, if you have valid grounds for canceling their trademark registration, then showing that card may convince the registration owner to come to an amicable resolution.

What is a smarter response to a merely descriptive trademark refusal?

Sometimes the best way to avoid a merely descriptive refusal is to avoid applying for merely descriptive trademarks. This is where it pays to use an experienced trademark attorney. Should your mark have included additional non-descriptive words?

In response to a merely descriptive refusal, consider whether the Supplemental Register is an option. If your application is based on an intent-to-use, you’ll first need to submit evidence of use of the trademark on your goods or services.

Are you dealing with a partial refusal that applies to only certain items? If so, consider deleting the specific goods or services for which the mark is considered merely descriptive.

Perhaps, the smartest response may be no response at all. Instead of replying to the Office Action, consider filing a new trademark application for a mark that includes less descriptive words or made-up terms. If you choose to apply for a new trademark that includes the previously rejected descriptive words, expect a forthcoming disclaimer requirement for the description portion of your new mark.

Also, consider a knockout search for any new terms added to your descriptive wording. It would be counterproductive to get past the merely descriptive hurdle only to encounter a new likelihood of confusion obstacle.

Need to file a smarter trademark response?

Reach out to US patent and trademark attorney Vic Lin by email or call (949) 223-9623 to explore how we can exploit a smarter approach to registering your trademark.

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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