RESPONDING TO USPTO OFFICE ACTIONS


WHEN DO I RESPOND?

What happens to a trademark or patent application when an Office Action from the USPTO goes unanswered? The application will be declared abandoned at the end of the allowed response time. This is applicable both for unanswered non-final actions as well as unanswered final actions.

Note: the notice of abandonment will be issued later than the effective date of abandonment.


Timely Response: If you have received by mail or email an:

  • Office Action from an examining attorney regarding your application;
  • a Priority Action;
  • an Examiner's Amendment/Priority Action (where a response is still required for the "Priority Action" portion);" or
  • a Suspension Inquiry letter,

you must respond within six (6) months of the mailing date of the Office action or your application will abandon. If the Office Action is a "Priority Action," responding within two (2) months will give you priority handling; however, you do have the full six (6) month response period, if necessary.

This means that your email response must arrive on the USPTO server prior to Midnight, Eastern Standard Time, of the last day of the response period- any problem with transmission will not excuse an untimely response. Should the last day of the response period fall on a Saturday, Sunday or U.S. Federal Holiday, you may submit your response prior to Midnight, Eastern Standard Time, of the next regular business day and it will still be considered timely.

TMEP 303.01 For paper correspondence, the date of actual receipt in the USPTO is assigned as the filing date of all correspondence. (TEAS and TEAS Plus correspondence must be filed electronically.)


HOW DO I RESPOND?

Responses are fact dependent and rely on understanding both the law and how to apply the facts to the law. Failure to respond is the leading cause of trademark application abandonments. Only 30% of TEAS Plus applications proceed to publishing for opposition without an office action refusal (the percentage is worse for TEAS). Overcoming a refusal without knowledge and experience in trademark law is difficult and many refusals can’t be overcome even with knowledge and experience because the applications were for trademarks that have serious Likelihood of Confusion issues with registered or pending trademarks. Sometimes, the likelihood of confusion is with a junior user, someone who started using the mark later but got their application in sooner. In cases like this, a cancellation proceeding may be the answer for the senior, prior user who was late in getting their application into the USPTO.

 Here’s some general purpose information on overcoming trademark refusals:


Overcoming Geographically Descriptive Refusal

Example of common refusal: Geographic terms: As a general rule, trademarks involving a geographical term are "weak" and are entitled to a narrow scope of protection. Depending on the facts, to overcome the refusal the link between the geographic mark and the term can be disputed, an exception can be argued, acquired distinctiveness can be argued, or an amendment to the Supplemental Register may be possible. A mark that is composed entirely of a geographic term may be registrable only on the Supplemental Register or on the Principal Register upon proving acquired distinctiveness (that mark has become distinctive of that party's goods in commerce).

If you wanted to start stronger: A mark that is a composite of a geographic term and a distinctive term may be able to register on the Principal Register if the geographic term can be disclaimed and the remaining part of the composite term is distinctive. Planning for a strong trademark from the beginning can not only avoid refusals but can also lead to a trademark with a wider scope of protection. (Are never-ending legal fees protecting a weak mark a good strategy?)


Overcoming a Likelihood of Confusion Refusal Or Opposition

3 DIY Strategies or Call us at 651-500-7590 for help


1. Is the Prior Mark a Descriptive Trademark? It may have a narrow scope of protection.

Descriptive Trademark = Narrow Scope of Protection Scenarios

  • A narrow scope of protection translates into Competitor B (later comer) being able to use a trademark very close to Competitor A and getting away with it even if Competitor A was first. Competitor A has to spend more and more to defend their market (advertising) and name (legal fees). If Competitor A had a stronger mark to begin with, the advertising could be offensive instead of defensive and the defensive legal fees could be avoided and invested in being more innovative or some other long term goal. If you are Competitor B, you may be able to argue that the rights of A are not broad enough to prevent B from registering.
  • A narrow scope of protection may mean that USPTO trademark examiners do not refuse new applications from Competitor B and Competitor C that have some similarity to Competitor A. Competitor A has to oppose, cancel or sue in order to defend their rights. (This can be good for the Competitor A attorney’s cash flow to always have some kind of legal proceeding in the works.) Sacrificing investing in growth in order to pay legal fees has long term consequences.  If you are Competitor B, you may be able to argue that the rights of A are not broad enough to prevent B from registering.



2. Is Your Mark the Prior Mark in Terms of Use in Commerce?

You may be able to get a consent agreement with the conflicting mark cited by the trademark examiner or oppose or cancel the prior registered or prior pending trademark application.


3. Use a Strategic Goods/Services Identification to Avoid or Overcome a Likelihood of Confusion Refusal or Opposition

A strategic, narrow, and precise goods and services description on an initial application, made as a result of a thorough trademark search may result in no likelihood of confusion as to source, and similar marks can co-exist. Amending in a Response to Office Action (ROA) to a strategic, narrow, and precise goods and services description on a refused application may overcome a likelihood of confusion as to source, and similar marks can co-exist.



How can you Avoid Likelihood of Confusion?

Verify Right to Use Before Using and Before Applying

A federal, state, and common law trademark search and clearance (conflict analysis) can verify the right to use the proposed mark by verifying no prior owner has acquired the right by use or registration in federal, state, or common law markets (registered and unregistered).  No search can uncover every used mark but doing a thorough search can substantially decrease the risk of having an opposed trademark or an infringing trademark.

ASK ABOUT OUR HALF PRICE SEARCH!!


Overcoming A Substantive Refusal

Not Just Patents ® Legal Services generally answers refusals for any of our application clients as part of the service at no extra charge. An exception to the no charge for answering a refusal would be if the client decided against a trademark search or went against advice on the implications of a trademark search and the application was refused on the basis of a previously identified likelihood of confusion. We also answer refusals for clients who have used other services and sometimes will even offer a discounted service if you used one of the form services who really messed up your application.


If an applicant is not represented by an attorney it is called pro se. A pro se applicant may be able to answer refusals themselves but keep in mind that your adversary, the USPTO trademark examiner, is a well-trained full-time attorney with experience in deciding if applications meet USPTO rules and trademark law.


If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. If you are going to try and answer the refusal yourself, you should simply and completely address the points raised by the examining attorney in the Office Action. Applicants are not required to provide case law support but may if it is appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal. Sometimes the examining attorneys give suggestions on how to overcome refusals, an example of  actual instructions from a trademark examiner on how to overcome a surname refusal is below in red.


Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board and submit a request for reconsideration if appropriate; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. The same trademark issues that caused the refusal may also limit the rights associated with the mark under common law.


Response Options for Surname Refusal

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying one of the following:

(1)        Submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in the application and for the same or related goods and/or services.  37 C.F.R. §2.41(b); TMEP §1212.04.;

(2)        Submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.”  37 C.F.R. §2.41(b); TMEP §1212.05(d).; or

(3)        Submitting actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §1212.06,  Such evidence may include the following:  examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.

Trademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.



TRADEMARK RESPONSE TIME/TRADMARK ABANDONMENT

The response time for an office action for a Trademark Application is six months from the mailing date of the office action. After that time the application is declared abandoned.


TMEP 718.02 Failure by Applicant to Take Required Action During Statutory Period

15 U.S.C. §1062(b). If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.


 TYPES OF OFFICE ACTIONS

Office actions are first action correspondences from the assigned USPTO  trademark examiner that set forth the legal status of a trademark application if the trademark application does NOT meet registration requirements.

There are several types of office actions:

1. Examiner’s amendments;

2. Priority actions;

3. Office actions (non-final and final); and

4. Suspension letters.

Note: If the trademark DOES meet registration requirements, the first action of the USPTO (the ‘TRAM Snapshot of App at Pub for Oppostn’) may go unnoticed by the applicant until the applicant receives a postcard or email of the ‘Notice of Publication.’

Types of Office Actions

(from http://www.uspto.gov/trademarks/process/update/oa.jsp)

   1. Examiner’s Amendment

      An examiner’s amendment is a written confirmation of an amendment made to an application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.

     

   2. Priority Action

      A priority action is a letter [electronic] in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant’s attorney. Unlike an examiner’s amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding.

      The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing.

  

 3. Office Action

      An office action is a letter in which an examining attorney sets forth the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.

      Applicants must respond to an office action within 6 months from the date the office action is mailed. If applicants fail to do so, their applications will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      There are two types of office actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only response to a final office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.

 

  4. Suspension letters

      A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application]. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.


GENERAL INFORMATION ON HOW TO RESPOND TO OFFICE ACTIONS

There is no set form or required format for responding to an office action. Applicants should address each issue raised by the examining attorney. Very often the trademark examiner will give advice on how to answer the office action. Actual examples of responses suggested by a trademark examiner follow. The first is for a ornamental refusal on a t-shirt is (very common refusal):

The applicant may overcome the above-stated ornamental refusal by doing one of the following, as appropriate:

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §§1202.03(d) and 1212.06 et seq; or

(2)   Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods. University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, the applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through the applicant’s use of the proposed mark with goods or services other than those identified here. In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  The applicant must establish that, as a result of this use on other goods or services, the public would recognize the applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

(3)   Submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); or

(4)   Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

Another example of trademark examiner advice to overcome a refusal for Failure to Function as a Mark for a trademark application for a band name:

Applicant may respond to this refusal by (1) submitting evidence that the mark has been used on at least two recordings, and (2) amending the identification of goods to state that the sound recordings comprise a series, i.e., series of pre-recorded compact discs, Digital Versatile Disk, audio cassettes, video cassettes, and phonograph records, all featuring music and/or musical performances; Downloadable musical sound recordings; Downloadable video recordings featuring music and/or musical performances, in Class 9.


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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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