Part 6 – Responding to Trademark Office Actions

A response to a USPTO trademark office action typically includes arguments and evidence to address any issues raised by the examiner in the office action. This can include evidence of the distinctiveness or acquired distinctiveness of the mark, or evidence that the mark does not conflict with any existing registered or pending marks. If you have received a USPTO office action, you should consult with one of our trademark attorneys to ensure that the response is complete and properly addresses all issues raised by the examiner.

Responding to USPTO Office Action Requirement to Disclaim a Portion of a Trademark

The United States Patent & Trademark Office (USPTO) may require a disclaimer for a portion of the trademark if it is determined that the portion being disclaimed is descriptive of the goods or services for which the trademark is being used. When the USPTO issues a requirement for a trademark applicant to disclaim a portion of a mark, the applicant must submit a written disclaimer of that portion. This can be addressed by filing a written response to the office action that includes the disclaimer language, which should state that the applicant is not claiming exclusive rights to use the disclaimed portion of the trademark apart from the registrable components of the trademark. The disclaimer should be clear and specific, and should indicate exactly what portion of the mark is being disclaimed. It is important to note that a disclaimer does not affect the validity of the trademark registration or the registrant’s rights in the trademark. The disclaimer simply allows others in the marketplace to use that specific portion of the trademark that is disclaimed to promote their goods and/or services. If you have received this type of office action, it is recommended that you consult with one of our trademark attorneys to ensure that the disclaimer is properly addressed.

Responding to USPTO Office Action Specimen Refusal

When the USPTO issues a trademark refusal of a specimen in a trademark application, the applicant must submit evidence to demonstrate that the specimen submitted with the application is an acceptable representation of how the mark is used in commerce. This can be done by filing a written response to the office action that includes a new specimen, or by providing additional information or evidence to demonstrate that the original specimen is an acceptable representation of the trademark.

The new specimen should show how the trademark is used on the goods or services. It should be the actual label, tag, or container of the goods, or the actual display associated with the services. It should also show that the trademark is used in a manner that would be perceived by consumers as indicating a single source of origin of the goods or services.

It is important to note that the specimen should not be a drawing, a digital image, or a mock-up, it should be an actual item that was used in the marketplace. Also, the specimen should not be a brochure, catalog, or website, unless it shows the trademark as it is used on the goods or services. If you have received this type of office action, you should consult with one of our trademark attorneys to ensure that the new specimen is proper and that it addresses all the issues raised by the office action.

Responding to a USPTO Office Action Likelihood of Confusion Refusal

When the USPTO issues a refusal of registration based on a likelihood of confusion with a pending or registered trademark, the trademark applicant may submit arguments and evidence to demonstrate that there is no likelihood of confusion between the applied-for mark and the existing mark.

This can be done by filing a written response to the office action that includes arguments and evidence such as:

• Showing that the goods or services are not related to the conflicting trademark and therefore consumers would not be likely to confuse the two trademark if both existed in the marketplace;
• Showing that the channels of trade, target consumers, and trade dress would be different and that these differences would avoid any likelihood of confusion.
• Showing that the trademarks are visually, phonetically and in concept very different.
• Showing the trademarks have been in use for a significant period of time without any reported instances of confusion, demonstrating that consumers can distinguish between the trademarks in the marketplace.
• Showing that the trademarks have a strong degree of distinctiveness, and consumers are likely to associate the trademarks with their respective sources.
• Showing that the trademark are covering different classes of good or services, which reduces the likelihood of confusion.
• Showing evidence of consumer surveys that demonstrate that consumers can distinguish between the two trademarks in the marketplace.

It is important to note that the burden of proof is on the trademark applicant to demonstrate that there is no likelihood of confusion. Also, the USPTO will consider all relevant evidence when making a determination of likelihood of confusion and the above arguments are not exhaustive. If you have received this type of office action, you should consult with one of our trademark attorneys to ensure that the response is complete and properly addresses all issues raised by the office action.

Responding to a USPTO Office Action Descriptiveness Refusal

When the USPTO issues a refusal of registration based on a finding that the mark is merely descriptive of the goods or services, the trademark applicant may submit arguments and evidence to demonstrate that the trademark is not descriptive of the goods or services.

This can be done by filing a written response to the office action that includes arguments and evidence such as:

• Showing that the trademark is not descriptive of the goods or services in question or only describes a small, insignificant features of the goods or services.
• Showing that the trademark is a coined or made-up word, not found in any dictionary, and therefore not descriptive.
• Showing that the trademark is a suggestive term, requiring imagination, thought, or perception to determine the nature of the goods or services.
• Showing that the trademark is arbitrary, having no relationship to the goods or services it represents.
• Showing that the trademark is a fanciful term, invented for the sole purpose of functioning as a trademark.
• Showing that the trademark is not in common use as a descriptive term for the relevant goods or services.

Additionally, if the trademark is deemed descriptive by the examining attorney, the trademark applicant may submit arguments and evidence to demonstrate that the trademark has acquired distinctiveness or secondary meaning.  A descriptive trademark can acquire distinctiveness, also known as secondary meaning, through substantial and exclusive use in the marketplace over a significant period of time.  The exact amount of time will depend on the specific circumstances of each case, but it generally takes a number of years (5 years as rule of thumb) of continuous and exclusive use for a descriptive trademark to become distinctive.  It is also important to note that the more descriptive the trademark, the longer and more extensive the use must be in order to acquire distinctiveness or secondary meaning.

This can be done by filing a written response to the office action that includes arguments and evidence such as:

• Showing evidence of the length and exclusivity of use of the trademark in commerce.
• Showing evidence of sales figures and financial data demonstrating the significant investment made in promoting the trademark.
• Showing evidence of surveys of consumers demonstrating that a significant portion of the relevant consumer population associates the trademark with the trademark applicant’s goods or services.
• Showing evidence of the amount and manner of advertising the trademark for a significant period of time.
• Showing evidence of testimonials or declarations from industry experts or consumers attesting to the distinctiveness of the trademark.

It is important to note that the burden of proof is on the trademark applicant to demonstrate that the mark has acquired distinctiveness and that it is no longer just descriptive. The standard for acquiring distinctiveness or secondary meaning can vary depending on the type of mark and the goods or services it is used in connection with. For example, it may be easier to establish distinctiveness for a trademark that has been in use for a long period of time and has been extensively advertised, compared to a trademark that has only recently been introduced. In some cases, even with good evidence, the USPTO may still find that the mark has not acquired distinctiveness or secondary meaning.

Responding to a USPTO Office Action Surname Refusal

When the USPTO issues a refusal of registration based on a finding that the trademark is primarily a surname, the applicant must submit arguments and evidence to demonstrate that the trademark has acquired distinctiveness or that it is not primarily a surname. The USPTO defines a surname as “a last name, family name, or inherited name.” This includes last names that are commonly used, as well as those that are less common or unique. The USPTO will consider a mark to be primarily merely a surname if it is the surname of the applicant or a person connected to the applicant, such as a family member, or if it is a surname that is in use as a last name by a significant number of people.

When examining a trademark application, the USPTO will consider various factors to determine if a mark is primarily merely a surname, including:

• Whether the primary significance of the trademark is that of a surname.
• Whether the trademark is the surname of the applicant or a close relation.
• Whether the trademark is a rare or unique surname.
• Whether the trademark has any other meaning in addition to being a surname.
• Whether the trademark has acquired distinctiveness through use in the marketplace.

It’s important to note that a surname can be registered as a trademark if it has acquired distinctiveness or secondary meaning, that is, if the primary significance of the trademark is not that of a surname.

Responding to a USPTO Office Action Ornamental Refusal

When the USPTO issues a refusal of registration based on a finding that the trademark is ornamental and not used as a source indicator, the applicant may submit arguments and evidence to demonstrate that the trademark is used as a source indicator and not just as an ornament. A USPTO ornamental trademark refusal is a decision made by the USPTO to reject a trademark application on the grounds that the trademark is ornamental and does not function as a trademark. In other words, the USPTO determines that the mark is being used as a decorative feature rather than as an indicator of source or origin for the goods or services.

For a mark to be registrable, it must be used as a source identifier. A trademark that is used only as an ornamental feature, or as a decorative or design feature of the goods or services, is not registrable under USPTO as it does not function to identify the source of the goods or services. For example, a t-shirt that has a large design or name placed on the front (instead of on the inside collar or breast of the shirt) would likely be refused registration because the design or name would be deemed ornamental. As such, the USPTO would refuse the registration because the ornamental design or name does not function as an indicator of source.

To overcome an ornamental refusal, the trademark applicant may submit a written response to the office action that includes arguments and evidence such as:

• Showing evidence of the use of the trademark in a manner that would be perceived by consumers as indicating a single source of origin of the goods or services, such as by including the trademark in advertising, packaging or labeling, or by showing that the trademark is used in a way that is distinctive.
• Showing evidence of consumer recognition of the trademark as indicating a single source of origin of the goods or services.
• Showing any survey evidence or consumer testimony of the mark being perceived as a source indicator
• Whether the trademark has any other meaning in addition to being a surname.
• Whether the trademark has acquired distinctiveness through use in the marketplace.

It is important to note that the burden of proof is on the trademark applicant to demonstrate that the mark is used as a source indicator and not just as an ornament. If you have received this type of office action, you should consult with one of our trademark attorneys to ensure that the response is complete and properly addresses all issues raised by the office action.