For the trademark applicant without legal training, the receipt of a United States Patent and Trademark Office (“USPTO”) Office Action looks ominous. What have I done wrong? Have I wasted all my money? These are normal reactions. But Office Actions come in all flavors, from the very trivial to the very serious. What you need to know is that Office Actions are a routine part of trademark prosecution.
The initial steps in responding to an Office Action are to identify precisely what the Examining Attorney requires or has refused, understand the reason for the Office Action, and assess whether the issue can be resolved. In Trademark Circular No. 10, we will discuss these issues.
I. The Basics: What Is an Office Action?
After a trademark application is filed, the USPTO assigns it to an Examining Attorney. As of this writing, this can take up to four months. The Examining Attorney reviews the application to determine whether it complies with the legal and procedural requirements for federal registration. If the Examining Attorney identifies an issue, the Office Action will explain the objection and, when appropriate, what the applicant must do to resolve it. Sometimes the Examining Attorney will suggest how to respond. The USPTO also offers plenty of guidance on what to do if you receive an Office Action.
The Examining Attorney can identify procedural or substantive issues.
II. Procedural Issues
Many Office Actions address issues that are not fatal to the trademark application itself but require the applicant to provide the correct address, reword a description of the mark or the goods and services, or make some other change to bring the application into compliance with the rules contained in the Trademark Manual of Examining Procedure (TMEP). Examples include:
- amendments to the identification of goods or services;
- problems with a specimen showing use of the mark;
- requirements to disclaim descriptive or otherwise unregistrable wording; and
- other information or changes needed to complete the application.
While such issues are often easily resolved, some may affect the scope of protection afforded by the trademark. For example, suppose an applicant files for a trademark that identifies clothing. The problem is that the trademark rules require greater specificity, and the Examining Attorney will issue an Office Action. In response, the applicant amends the description of goods and services to include shirts, pants, and jackets. That is fine, but the scope of protection is now narrower and may exclude other articles of clothing, such as underwear or nightwear. Once filed, the applicant is not permitted to broaden the scope of the original application. The point is that merely because the Office Action addresses a procedural issue does not mean it is unimportant or trivial.
III. Substantive Refusals
Other Office Actions may present more difficult questions because the Examining Attorney has determined that the proposed mark does not qualify for registration. These are referred to as refusals. Here are two examples of a trademark refusal.
A. Likelihood of Confusion
The Examining Attorney may refuse registration because an existing registration is considered confusingly similar to the applicant’s mark, and the parties’ goods or services are identical or sufficiently related that consumers are likely to be confused as to their source. This kind of refusal underscores the importance of performing a proper trademark search before applying for a trademark. See Circular No. 3.
B. Descriptiveness
Registration may also be refused because the Examining Attorney believes the mark merely describes a characteristic, quality, function, feature, purpose, or use of the identified goods or services. Descriptive trademarks are weak trademarks, but under some circumstances, such as when a non-generic trademark is in use, they may qualify for registration in the Supplemental Register. See Circular No. 4.
Other statutory grounds for refusal can also arise. Here is a list:
- Deceptively misdescriptive marks
- Primarily geographically descriptive marks
- Primarily geographically deceptively misdescriptive marks.
- Primarily merely a surname.
- Deceptive matter.
- Marks that falsely suggest a connection with persons, institutions, beliefs, or national symbols.
- Marks containing certain government flags, coats of arms, or insignia.
- A mark consisting of or comprising the name, portrait, or signature of a particular living individual without written consent.
- Failure to function as a trademark, including matter that consumers would not perceive as identifying and distinguishing the source of the goods or services.
Unlike many procedural requirements, a substantive refusal may require legal argument and supporting evidence rather than simply an amendment to the application.
IV. Not Every Refusal Should Be Contested
Sometimes there is a strong argument for withdrawal of a refusal, such as when the Examining Attorney is wrong. In other cases, when the Examining Attorney’s position is well supported, an extended response may simply increase the applicant’s effort and expense without improving the likelihood of registration. Applicants should always review the Office Action with an eye to determining whether there is a basis for challenging the Examining Attorney’s refusal. An effective response should address the Examining Attorney’s reasoning with relevant legal precedent, reference to USPTO rules of practice, or other relevant evidence.
If there is no effective response, it may be wiser and more cost-effective to accept an Examining Attorney’s suggested amendment or reconsider the mark itself.
V. Nonfinal and Final Office Actions
An important distinction is whether an Office Action is “nonfinal” or “final.”
A Nonfinal Office Action ordinarily gives the applicant an opportunity to address the issues raised by the Examining Attorney in a response. If he or she is not persuaded by the response, or if the response does not resolve the issue, the Examining Attorney will issue a Final Office Action.
Responding to a Final Office Action by filing a Request for Reconsideration requires a different approach, because simply repeating an argument the Examining Attorney has already rejected is unlikely to accomplish much. The applicant must carefully evaluate his or her options, including whether the refusal warrants an appeal to the Trademark Trial and Appeal Board (TTAB). If the applicant contemplates an appeal, the applicant, in the response, should ensure that the Examining Attorney has all relevant evidence, because the TTAB generally will not consider new evidence.
In either case, the response is due three months from the issue date of the Office Action (nonfinal or final). For a fee, you can extend the response time by another three months.
IV. The Response Matters
Ignoring an Office Action can result in abandonment of the application. But filing an effective response is important. The response becomes part of the application’s prosecution history, which the public can access through the USPTO. Amendments, disclaimers, factual representations, and legal positions taken during prosecution will have lasting effect. Here are just a few ramifications that responses to Office Actions may have and which are preserved in the prosecution history:
- Narrowing the registration. An amendment to the identification of goods/services can reduce what the resulting registration expressly covers.
- Disclaiming exclusive rights. A disclaimer concedes that the applicant does not claim exclusive rights in the disclaimed matter apart from the mark as a whole.
- Making potentially consequential factual statements. Statements about the nature of the goods, meaning of the mark, relevant consumers, channels of trade, or third-party usage may later be cited when the registrant takes a different position.
- Creating admissions useful to an adversary. Rarely top of mind for small businesses, but the prosecution history may be examined in later opposition, cancellation, or infringement proceedings and used as evidence bearing on the applicant’s prior position.
Hence, the objective is not merely to make the Office Action go away. It is to obtain the strongest useful registration that circumstances allow.
V. When Should You Consult a Trademark Attorney?
Some Office Actions are straightforward. Others require an understanding of trademark law, USPTO examination practice, and the practical value of the resulting registration. Before responding to a significant refusal, an applicant should therefore understand:
- What exactly is the Examining Attorney refusing or requiring?
- Can the problem be corrected by amendment?
- If the refusal is substantive, is there a reasonable legal or evidentiary basis to challenge it?
- What effect will a proposed amendment or disclaimer have on the resulting registration?
- If the refusal cannot realistically be overcome, what alternatives are available?
If warranted, and many times the Examining Attorney may suggest it, the applicant should consider retaining a qualified trademark attorney.
Remember, an Office Action is not necessarily bad news. But it is a point in the application process at which an applicant should pause, understand the problem, and make a deliberate decision about how best to proceed.
— Adam G. Garson, Esq.