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How to respond to USPTO “office action letter”

How to respond to USPTO “office action letter”

Posted by Steve Vondran | Oct 13, 2015 | 0 Comments

Attorney Steve® Trademark College® – Dealing with Denial!

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Introduction

This blog discusses how to respond to a USPTO (United States Patent and Trademark Office) “office action letter” which you may need to do to fight to register your service mark or your trademark.

Bonus materials:  Click here for a sample response to USPTO office action letter.

What is the difference between a service mark and a trademark?

A service mark describes, distinguishes or identifies “services” that a company provides.  The “trademark” is used for “goods” or products (ex. a downloadable movie).  Functionally they are the same and whether you obtain a federally registered trademark or servicemark you will get the “R” symbol which gives you the federal trademark protection for your goods and/or services.

A service mark could be, for example, “McDonalds” or “Wallmart.”  A trademark could be a line of sports products, or a software product.  Some companies may apply for both a trademark and a servicemark (ex. Google).

You may have seen the “tm” and “sm” symbols on websites or in advertisements.  These are NOT federally registered marks.  These pertain to state law rights (often referred to as “common law”) so do not be confused by these, use of these DO NOT CONFER FEDERAL TRADEMARK RIGHTS.

How much time do you have to respond to the office action letter?

A trademark applicant only has six months from the time of receiving an office action letter (measured by the date the letter was mailed/issued to you), so it is important to seek the assistance of a federal trademark lawyer if you need help with responding to these letters.  If you do not respond in a timely fashion, you may be deemed to have waived all rights and abandoned your application – in which case the trademark will not issue.

Refusals to register trademarks can often be remedied, so fill out the form below to discuss with one of our lawyers.  If you have had a trademark denied due to failure to respond within the applicable timeframes, you may be able to file a “petition to revive” the application and we can help with those as well.

What are the common grounds the trademark examiner will deny a trademark application?

Here are some of the common grounds a trademark might be denied:

  1. Failure to provide a “specimen” (you do not initially need a specimen for an “intent to use” application).  Keep in mind, you really don't need anything fancy, but you do have to show actual use of your mark in interstate commerce, and this can be satisfied with a business card, advertising or marketing materials, brochures, photos, etc.).
  2. Likelihood of consumer confusion (Section 2(d) refusal)
  3. Geographically mis-descriptive
  4. Surnames (nicknames may qualify for registration)
  5. Descriptive (which may require that you “disclaim” part of your mark)
  6. Mark description – amendment required
  7. Disclaimer required

If you have been denied on any of these, or other grounds, email us at the email on the right side of this page.  Objections can often be overcome with strong legal arguments, citation to the applicable case law, or by providing evidence applicable to the situation. Other times an amendment or disclaimer can solve the denial issue.  Don't give up, we can help you sort through possible responses that might help you secure the trademark.

What is the “likelihood of consumer confusion” issue?

This is one of the common grounds which results in an “office action letter” from the USPTO trademark examiner.  Here is some typical language you might find in the denial letter:

“Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrants. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination……in this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62.”

What is “similarity of marks” with another companies trademark?

This is another part of the “likelihood of consumer confusion” test that the trademark examiner will analyze.  The more similar your mark is with an existing registered mark, the less likely you are to be able to obtain a trademark.  For example, a office action letter may discuss the following:

“SIMILARITY OF THE MARKS Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014)……Similarity in any one of these elements may be sufficient to find the marks confusingly similar. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.   Matter that is descriptive of or generic for a party's goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (Fed. Cir. 2004)).  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  It is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered when making purchasing decisions).”

Additional legal reference might be cited as follows:

“Moreover, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser's memory and to be used when requesting the goods. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation's Foodservice, Inc. , 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).”

What is the “similarity of the goods” factor for the likelihood of consumer confusion test?

This is another factor that will be weighed and examined by the trademark examiner.  Under this prong of the test you might see language quoted such as:

“SIMILARITY OF THE GOODS The goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).  Even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods…the respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing be such that they could give rise to the mistaken belief that the goods emanate from the same source.” See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356.”

Can your trademark be denied if there is a closely related prior filed pending application?

Yes.  Here is sample language you might find in this type of circumstance where another company “beat you to the trademark office.”

ADVISORY – PRIOR-FILED APPLICATIONS The filing dates of pending U.S. Application Serial Nos. 864456XX and 86447XXX precede applicant's filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant's mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant's response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications. In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant's mark and the marks in the referenced applications. Applicant's election not to submit arguments at this time in no way limits applicant's right to address this issue later if a refusal under Section 2(d) issues. If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

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Problems with the description of the mark

Here is another possible grounds for holding up the registration of your trademark:

“MARK DESCRIPTION AMENDMENT REQUIRED The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.”

Disclaimer required to eliminate descriptive (unprotectable) parts of your mark

Another very common grounds to refuse to register a trademark is that part of the name you are trying to get a trademark for contains “descriptive” material that cannot be protected.  For example trying to get a trademark for “Phil's Software Company” may result in denial because “Software Company” is an name that just describes what you do (i.e. you are a software company).  Others are allowed to be a software company and you may be asked to “disclaim” any rights to software company part of your trademark.  Here is what you might see in the denial letter:

DISCLAIMER REQUIRED Applicant must disclaim the wording “XXXX” because it merely describes the nature of applicant's goods, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). Here, applicant has described its goods as “ XXXX” in International Class 028. Thus, the word “BEST SOFTWARE” is merely descriptive of the nature of applicant's goods. An applicant may not claim exclusive rights to terms that others may need to use to describe their goods in the marketplace. See Dena Corp. v. Belvedere Int'l, Inc. , 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

ENTIRE MARK MAY NOT BE DISCLAIMED

An entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int'l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001).  If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable.  TMEP §1213.06.

Problems with the “Specimen”

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

Listen to Vondran Legal Hour Podcast discussing this topic:

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Click on the image above to hear the podcast.

CLARIFY ENTITY TYPE

The name of an individual person appears in the section of the application intended for the trademark owner's name; however, the legal entity is set forth as a corporation.  Applicant must clarify this inconsistency.  TMEP §803.02(a); see 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b).

If applicant is an individual, applicant must request that the legal entity be amended to “individual” and must indicate his or her country of citizenship.  See TMEP §803.03(a).  Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See TMEP §803.03(c).

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

AMEND DISCLAIMER OF DESCRIPTIVE WORDING

Applicant has disclaimed the entire applied-for mark; however, an entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int'l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001).  If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable.  TMEP §1213.06.  Accordingly, the disclaimer is not accepted and will not be entered into the USPTO's database.  See TMEP §714.05(a).

Applicant must disclaim the wording “LITIGATION” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant's r services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).

The attached evidence from thelawdictionary.org shows this wording means “a judicial controversy. A contest in a court of justice, for the purpose of enforcing a right.”  Therefore, the wording merely describes a characteristic of applicant's services, namely, a type of service provided by applicant.

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

Applicant should submit a disclaimer in the following standardized format:

No claim is made to the exclusive right to use “LITIGATION” apart from the mark as shown.

IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified because the way the wording is set forth could entail multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:

“Legal services in the areas of business, real estate, the Internet, technology, software and intellectual property,” in class 45.

Applicant must rewrite the identification of services in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(a).

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

Legal Resources

  1.  USPTO guide on how to respond to office action letter
  2.  How to challenge issuance of another company's trademark through TTAB

Contact a Trademark & Intellectual Property Law Firm

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About the Author

Steve Vondran

Welcome to the SHORT BIO page for Attorney Steve®  (Yes, I was able to get a trademark for Attorney Steve®) Click here to go to a more COMPLETE BIO. AZ Bar Lic. #025911 CA. Bar Lic. #232337 Introduction I have done a lot of things in my 15 years of law practice and in my life in general.  ...

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