garbis law, llc

An Office Action is issued by the USPTO to let you know that your application has not been approved for registration. If an issue is being raised for the first time, this Office Action is considered “non-final.” If you have already submitted a response to an initial Office Action, but were unsuccessful in persuading the Examining Attorney to approve your application, a “final” Office Action is typically issued. At that point, the only way to respond to that is by filing a trademark appeal or a Request for Reconsideration with the Trademark Trial and Appeal Board.

Office Actions can be substantive or non-substantive in nature. Substantive office actions are issued when the Examining Attorney does not think your application should be approved based on legal grounds. A common example here includes a refusal based on a likelihood of confusion with another previously applied for (or registered) trademark. Another common issue that comes up is that the Examining Attorney thinks your trademark is merely descriptive and not entitled to trademark protection. Regardless of the issue, a substantive office action requires you to present a detailed legal argument stating why your mark should be allowed to register.

Non-substantive office actions are typically much simpler to address. They come up when you need to provide some additional information on your application or for clarification purposes. For example, a disclaimer may be required disclaiming descriptive terms in your mark. There may have also been issues with the information provided that need to be addressed. Before actually issuing an Office Action for simpler items, an Examining Attorney may contact you to try and resolve procedural issues directly. If you and the Examining Attorney come to an agreement regarding the discussed upon issues, he or she will issue an Examiner’s Amendment as confirmation to your discussion and make the necessary changes to your application.

Regardless of the type of Office Action, you typically have 6 months from the mailing date to respond or risk abandonment of your application. Any response should address all of the legal and factual arguments raised by the Examining Attorney and should include relevant evidence and case law to support your arguments.

One of the most common reasons that an Examining Attorney rejects a trademark application is because it would cause a “likelihood of confusion” with a registered trademark under Section 2(d) of the Lanham Act. When assessing a likelihood of confusion between two marks, it is important to look at a list of factors set forth by the court in In re E.I DuPont de Nemours & Co (DuPont). The key factors typically used in this analysis are the similarity or dissimilarity of the marks in their entireties and the relatedness of the goods or services as described. When responding to a likelihood of confusion rejection, it is important to look at all of the factors and determine which ones best apply to your situation.

Another common refusal is based on descriptiveness. Under Section 2(e) of the Lanham Act, descriptive marks may not be registered. These marks include marks that are:

• Merely descriptive of quality or characteristic of the goods or services;
• Deceptively misdescriptive of a quality or characteristic of the goods or services;
• Primarily geographically descriptive (or misdescriptive) of the goods or services;
• Primarily merely a surname.

In order for a term to be protectable as a trademark, it must be distinctive. If the USPTO were to allow an applicant to register descriptive marks, it would create a problem for others who need to use words that are necessary to describe a product or service. To overcome a refusal based on mere descriptiveness, an applicant would have to argue that the mark is not merely descriptive because it is inherently distinctive, or the applicant would have to present evidence to support that the mark has acquired distinctiveness under 2(f) of the Lanham Act.

A mark is merely ornamental and does not qualify for trademark protection if it is a decorative feature that does not identify the source of the applicant’s goods or services. If the Examining Attorney deems that the mark is solely or merely ornamental, he or she will issue a refusal because the mark does not function as a trademark. These types of refusals are extremely common on applications to protect a design on clothing.

To overcome an ornamental refusal, an applicant may submit a different specimen showing the design functioning as a trademark (if there is one). Additionally, a substantive response can be submitted trying to establish inherent distinctiveness, acquired distinctiveness, or evidence that you the mark has been registered for different class of goods/services and you can assert that it serves as a secondary source indicator.