Why Your Trademark Arguments Will Fail: How to Win an Office Action Rejection

Why Certain Trademark Arguments Are Irrelevant

Certain trademark arguments are destined to fail. Even when great points are made, they will fall on deaf ears. The secret to a successful trademark response lies in understanding the right approaches for certain situations. Though your legal position may be strong, you might be making arguments at the wrong time and place.

Need to overcome a trademark refusal? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to see how we can help you get your trademark registered.

What are some loser trademark arguments?

Suppose your trademark application has been rejected for being too similar to a registered mark. You take a closer look at registration and realize that you have an earlier date of first use in commerce than the date cited in the registration. Will arguments based on your earlier priority prevail?

No, USPTO examining attorneys will not compare dates of first use in reviewing your trademark application. Instead, trademark applications are reviewed by the USPTO in the order received. That means it is possible, and not uncommon, for an earlier trademark application with a later use date to block a subsequent application with an earlier use date.

How do you win the argument when your trademark is similar to others?

Instead of focusing on differences between the respective marks, you might consider a consent agreement with the other trademark owner. Be careful though. You do not want to approach other trademark owners without first consulting with your trademark attorney. Otherwise, you might end up inviting more legal problems.

If you indeed have priority over the cited trademark registration, then the registration owner may be motivated to consent to your registration in order to avoid a cancellation proceeding. Consent agreements are given great weight by the USPTO.

How can you remove blocking trademark registrations without filing a TTAB cancellation?

At times, a registered trademark blocking your application may be defective. In other words, the registered trademark has certain vulnerabilities that may be challenged. An experienced trademark attorney can see if an expungement or reexamination can be filed to remove the registration.

You can request to suspend your application as you seek to remove the deadwood obstacle. Such an approach might be more effective than arguing the differences between the marks.

How do you avoid the need for trademark arguments?

Astute readers will recognize that a simple way to avoid or minimize rejections is to file early. Since trademark applications are examined in the order received, you want to beat others to the USPTO. The later applicant bears the burden of showing earlier usage. By filing first, you can avoid that extra work.

Another strategy is to have a professional knockout search conducted before you file. By spotting the potential risks upfront, you can either pivot to a new mark or add some terms to your preferred mark. Either way, you at least have some options to make changes before applying.

Need a winning trademark registration strategy?

By adopting a smarter trademark strategy upfront, you can save months of time and thousands of dollars. Call Vic at (949) 223-9623 or email vlin@icaplaw.com to see how we can help get your trademarks registered.

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