Unfortunately the U.S. Patent and Trademark Office denies a lot of applications. Sometimes the denial is a simple formality, other times it is more challenging. When the office denies an application it will issue an “Office Action” which is simply a rejection letter explaining the office’s reasoning for the denial. In this post we will cover some common reasons for a denial and what you can do to fix them.
Don’t Ignore the Office Action
The first thing to consider is the timing of the rejection. As soon as you receive an Office Action, you should place multiple notes on your calendar. The office will require a response within six months so you should place that date, as well as a couple reminder dates, on your calendar. If you fail to respond on time, you will lose your application.
Deficiencies; Disclaimers; Specimens
Many applications are denied for simple administrative type issues. Luckily, these are usually easy to fix, but not always. One example is a rejection due to confusion over who the applicant is. You should make sure it is clear whether you, or a registered business entity, is the owner/applicant.
Another example is when you’ve included a word that you may not protect. For example, in our example about Evan’s Coffee Shop, the USPTO would likely require the application to disclaim “Coffee Shop” because you can’t protect a descriptive term. However, you could still claim ownership of “Evan.”
Lastly, your specimens might be insufficient. You must submit specimens of use that clearly show the mark as it is connected to you, the source of the good or service. Specimen submissions can be tricky and we will cover that in a later post.
Another common reason applications are denied involve the inability to register a mark that is descriptive. When an application is rejected for this reason it can be very difficult to overcome the rejection. You will have to submit a document similar to a legal brief, hopefully including citations to case law, that explains your argument as to why the mark is not descriptive. This can be complex and you should seek legal counsel for these types of rejections.
Likelihood of Confusion
Another complicated rejection is likelihood of confusion with a prior registration. When an examiner reviews your application, he or she will search for prior registrations. If your mark is likely to cause consumer confusion with a prior application, you will get an Office Action.
Again, you will likely need to submit a brief arguing why you believe consumer confusion is not likely. Perhaps the goods and services are sufficiently different, or perhaps the examiner’s conclusion is unreasonable. Regardless, this brief can be complex and this is another type of rejection for which an attorney’s assistance can prove important.
The good news is many of these issues can be avoided or at least mitigated to some degree with proper due diligence before submitting an application. You should always perform a trademark search before submitting your application and it is often a best practice to seek legal counsel to assist with your application.
That’s where we come in. We’ve filed a lot of applications and would be happy to assist you. Contact us today to learn about your trademark rights!
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.