Trademark Refusals

Types of USPTO Office Actions

Many people assume that obtaining a trademark registration is as simple as filling out a form. But it actually involves thorough examination of your application by a USPTO trademark examining attorney. If the USPTO examining attorney determines your trademark can’t be registered, the attorney will refuse registration by issuing a formal USPTO Office Action. Common trademark refusals include proposed trademarks that are mere descriptions of goods or services, or marks deemed to be confusingly similar to a previously applied-for or registered mark. In fact, it is not uncommon for the United States Patent & Trademark Office (USPTO) to issue several different types of Office Actions in connection with your trademark application.  The following discussion provides a brief overview of USPTO office actions.

Not all trademark applications process without a problem. If you or your business has been issued an office action from a USPTO examining attorney, let us review your trademark case and determine what type of response is appropriate. The following discussion briefly explains a few of the USPTO Office Actions that an examining attorney may send to an applicant during the trademark registration process.

Important USPTO Update: As of December 3, 2022, trademark applicants have only three (3) months (instead of six (6) months) to respond to office actions issued during the examination of trademark applications filed under sections 1 or 44. Applicant’s may request one three-month extension per office action for an additional $125 filing fee.

What Is A Trademark Office Action?

After a trademark application is submitted to the USPTO for registration, the USPTO will assign an examining attorney from one of its law offices in Washington D.C. to review and analyze the trademark application.  Once the USPTO examining attorney has had an opportunity to review and analyze the trademark application, he or she may issue several different types of USPTO Office Actions in connection with the trademark application.

During the trademark registration process, it is quite common for one or several trademark office actions to be issued by an examining attorney assigned to review and analyze your trademark application.  A trademark office action is a formal letter issued by the USPTO examining attorney whereby he or she sets forth specific legal problems with your proposed trademark, as well as with the trademark application itself. If a trademark office action is issued, each of the issues set forth by the examining attorney will require an acceptable response before your proposed trademark can register. Most trademark office actions will require a formal written response to resolve all outstanding issues, but some office actions can be resolved through an email or call to the USPTO examining attorney.

The most common legal problems cited in USPTO Office Actions are described below:

  • Requirement to clarify the identification of goods or services;

  • Requirement to divide the good and services identified into several trademark classes;

  • Requirement to substitute a proposed trademark class for a more appropriate trademark class;

  • Requirement to disclaim a portion of the trademark because it is descriptive or not registrable;

  • Requirement to substitute a submitted specimen with a more appropriate specimen showing the trademark in use in commerce;

  • Section(e)(1) “descriptiveness” refusal;

  • Section 1, 2, and 45 “ornamental” refusal;

  • Commonly used phrase refusal;

  • Failure of mark to indicate source of goods or services refusal.

Non-Final & Final Trademark Office Action

A Non-Final Office Action raises a legal problem about your application for the first time. You must respond to this letter within three (3) months from the date it issues. If your response satisfies each legal problem in the Non-Final Office Action and does not raise any new problems, your application will proceed toward registration. If your response does not satisfy each problem and does not raise any new problems, you will be sent a Final Office Action. If your response raises a new problem, the examining attorney will send you a new non-final office action to address the new problem and indicate any outstanding trademark refusals and/or requirements previously raised.

As noted above, once the USPTO examining attorney has had an opportunity to review and analyze a trademark application, an office action may issue if he or she finds legal problems with the proposed mark or the application itself.  The first office action issued will be titled as a Non-Final Office Action. As such, the trademark applicant (through its attorneys) will have an opportunity to respond and satisfy each issue raised in the office action. If the trademark applicant’s response raises a new problem, the examining attorney will send a new Non-Final Office Action to address the new problem and indicate any outstanding trademark refusals and/or requirements previously raised.

If the trademark applicant fails to respond and satisfy all legal problems set forth in the non-final office action, the USPTO examining attorney will issue a final office action. It is critically important to ensure all legal problems are addressed in the first response so that a final office action is avoided. When a trademark applicant receives a Final Office Action, it is the applicant’s last opportunity to file a response to resolve all issues raised in the Non-Final Office Action. If the trademark applicant’s response satisfies each legal problem in the final office action, the trademark application will proceed to the next phase of the registration process. However, if the applicant’s response fails to resolve all issues set forth by the examining attorney, the trademark application will be abandoned unless the applicant timely files an appeal with the Trademark Trial and Appeal Board (TTAB). Applicants often file both an appeal to the TTAB and response to the Final Office Action issued by the USPTO examining attorney.

What Are Other Common Types of Trademark Office Actions?

Besides Non-Final and Final Office Actions, a USPTO examining attorney may issue other types of trademark office actions. A few of these other types of trademark office actions are described below.

  • Examiner’s Amendment
    An examiner’s amendment may be used by an examining attorney to resolve minor legal problems with the trademark application.  Generally, examiner’s amendments are not used when there are statutory trademark refusals, such as refusals based on likelihood of confusion, surname, descriptiveness, ornamental, and the like.  An examiner’s amendment may be authorized by the trademark applicant (through its attorneys) over the phone or through email correspondence and confirms in writing a change to the trademark application. A formal written response is not required for an examiner’s amendment.  If a response is submitted, it could actually delay the registration process. This should be avoided.

  • Priority Action
    A priority action is similar to an examiner’s amendment.  Priority actions are typically used when the examining attorney believes the legal problem can be resolved by the trademark applicant (through its attorneys) in writing after discussing the same with the applicant over the phone or through email. A priority action can be a non-final or final action. A trademark applicant must respond in writing to a priority action within three (3) months from the date it issues.

  • Suspension Letter
    A suspension letter, or letter of suspension, issues when a trademark application is put on hold for a particular reason.  For example, a trademark application may be suspended due to an earlier filed trademark that is confusingly similar. The examining attorney will issue a letter of suspension and the trademark application will stop processing until the earlier filed trademark is abandoned, cancelled or registered. A formal written response may be submitted against a suspension letter praying for its removal, but it is not required.

Responding To Common USPTO Trademark Refusals

As noted above, generally when a trademark office action is issued by a USPTO examining attorney, the trademark applicant will be given three (3) months to provide a written response.  The written response must address and satisfy all legal issues raised in connection with the proposed trademark or the application itself.

Important USPTO Update: As of December 3, 2022, trademark applicants have only three (3) months (instead of six (6) months) to respond to office actions issued during the examination of trademark applications filed under sections 1 or 44. Applicant’s may request one three-month extension per office action for an additional $125 filing fee.

Requirement for an accurate identification of goods or services

One of the most important parts of a trademark application is the accurate description of the particular goods and/or services that are, or will be, used in connection with the proposed trademark. The applicant’s identification of goods should be brief, clear and concise. The description should identify the products and/or services by their common, ordinary name so that the average consumer can easily understand what they are.

It is very common for an examining attorney to issue a trademark office action because the applicant’s identification of its products and/or services is not accurate. If the examining attorney issues a refusal because the description of products and/or services is unclear, indefinite, and/or is too broad, the applicant will be required to substitute the description with wording that is more specific, clear, accurate, and concise or otherwise definite.  It is important to understand that that an amendment to the description of good and/or services in the application may only be clarified or to narrow the goods and/or series specified.  Addition of good and/or services to the description is not permitted.  For example, if the original application identified the products as “wetsuits,” applicant cannot add “leashes” or “traction pads” by way of an amendment to the original application.  However, an applicant would be permitted to a limit or narrow the original description to “wetsuits for surfing.”

Requirement to file in more than one class of goods and/or services

It is very common for an examining attorney to issue a trademark office action because the applicant’s goods and/or services cover multiple classes and not just a single class. If this situation occurs, the applicant may respond to the office action and request for its proposed mark to be filed in multiple trademark classes within one trademark application.  The trademark applicant must pay a fee for each additional trademark class covered. The provision allowing the filing of one application for more than one trademark class of goods and/or services and the issuance of a single federal trademark certificate is for the convenience of the applicant.

Requirement to disclaim a portion of the proposed trademark

It is common for a USPTO examining attorney to issue a trademark office action requiring the trademark applicant to disclaim an unregistrable component of the proposed trademark. However, the disclaimer cannot materially alter the character of the proposed trademark.  The purpose of the disclaimer is to permit the registration of the proposed trademark that is registrable as a whole, but contains matter that would not itself be registrable alone.  The USPTO policy is to disclaim generic names, descriptive terms, and other matter that does not function as a trademark. The impact of the disclaimer is that the applicant forgoes the exclusive rights in those particular portions disclaimed. For example, if an applicant proposed to register “Catalyst Surfboards,” the USPTO examining attorney would require the applicant to disclaim the exclusive rights in “Surfboards” because the term is generic and everyone in the surfboard industry would need that term to identify and describe their business and/or products.

Specimen refusal

It is USPTO policy that a trademark registration will not be granted unless and until the applicant files a verified statement, together with specimens of use, that it has used the trademark in U.S. interstate or foreign commerce. This is achieved in an “actual use” application by alleging use and filing the application with a specimen evidencing use of the trademark.  In an “intent to use” application, this is accomplished by a specimen accompanying either an Amendment to Allege Use or a Statement of Use.  Specimens of use of the trademark must also accompany the Section 8 declaration required during the fifth year after registration and with the renewal of the registration every 10 years. A Section 8 declaration is a signed statement filed by the trademark owner that either: (1) the trademark is in use in commerce with the goods or services listed in the registration; or (2) the trademark is not in use in commerce due to special circumstances that excuse nonuse.

The good and/or services specified in the trademark application must match the goods and/or services shown in the specimen.  If they do not, then the trademark application will be rejected or refused and the USPTO examining attorney will issue an office action accordingly.  Common problems with specimens submitted by trademark applicants include:

  • The trademark does not appear (or is not clear or obvious) on the specimen.
  • The trademark on the specimen looks different from the trademark submitted in the trademark application.
  • The specimen is a mock up, printer’s proof, or other digitally altered image that is not actually used with the good or services described in the trademark application or in the marketplace.
  • The specimen is not the appropriate type to show use in commerce in connection with the goods or services described in the trademark application.
  • The specimen is not associated with the goods or services as described in the trademark application.

Note, in 2019, the USPTO created a new policy to guide examining attorneys reviewing digitally created specimens.  This USPTO policy was a direct result of a significant number of trademark applications being submitted with fake or false digital specimens claiming use in commerce.  If the examining attorney believes that the specimen submitted is digitally altered (or photoshopped) a refusal to register will be issued with a request for detailed information about the good or services covered in the trademark application.

Section 2(d) “likelihood of confusion” refusal

A Section 2(d) likelihood of confusion refusal will be issued when an examining attorney completes a search of the USPTO trademark database of registered trademarks and determines that your proposed trademark is confusingly similar to one or more registered trademarks used with the same, similar or related goods and/or services. Under these circumstances, the examining attorney will argue in his or her refusal that there is a reasonable probability consumers will be confused if your proposed trademark and the registered trademark existed in the same, similar or related marketplaces. In other words, if both trademarks existed in the marketplace, a reasonable, average consumer may buy your product believing they were actually buying the trademark registrant’s product, and vice versa.

Note, if the USPTO examining attorney finds that a likelihood of confusion may exist with an earlier-filed pending (but not yet registered) trademark, the examining attorney will suspend action on the trademark application pending final resolution of the earlier-filed pending trademark.  If the earlier-filed pending trademark turns into an official federal trademark registration, the later-filed trademark application will be refused on a likelihood of confusion basis.

Section 2(e)(1) “descriptiveness” refusal

A trademark is descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services with wich the trademark is used.  It should be noted that a term (or terms, phrases, etc…) to be used as a trademark is “descriptive” if it directly describes any of the goods or services described in the trademark application.  Similarly, a term that describes some, but not all, of the aspects of the goods or services is still “descriptive.” To be found descriptive, a term need only describe a single, significant quality or feature of the goods or services.  A Section 2(e)(1) refusal is made when an examining attorney finds evidence showing the terms used in your trademark merely describe some aspect of your goods or services. For example, an examining attorney would issue a refusal for “foamie” for surfboards, or “neoprene” for wetsuits. The rational behind the USPTO issuing descriptive refusals is because businesses and competitors in the marketplace need to be free to use descriptive language when characterizing their own goods or services to the public without the threat of a lawsuit for trademark infringement.

Section 2(e)(4) “surname” refusal

A surname is your family name or last name.  A Section 2(e)(4) surname refusal will be issued by the USPTO examining attorney if he or she believes your trademark is primarily merely a surname.  Surnames are not registrable on the USPTO Principal Register absent a showing of acquired distinctiveness or secondary meaning.  The legislative history of the Trademark Act indicates that the word “primarily” was added to the existing statutory language “merely” with the intent to exclude registration of common surnames such as “Johnson” or “Jones,” but not registration of unique surnames such as “Cotton” or “King” which, while surnames, have a primary significance other than as a surname. Section 2(e)(4), reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a trademark for particular goods or services.  The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name. The question of whether a trademark is “primarily merely” a surname depends on the surname being registered and the trademark’s primary significance to the consuming public. Del Monte, Kellogg’s, Disney, Spiegel, Ralph Lauren and Johnson & Johnson are just a few of the hundreds of surnames that have become registered trademarks.

Section 1, 2, and 45 “ornamental” refusal

An ornamental refusal is when the USPTO examining attorney refuses registration of your trademark because the evidence you provide showing how the applied-for trademark (the “specimen”) is used is only an ornamental or decorative feature on the goods and not as a trademark to indicate the source of the goods. For example, a slogan or design prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan or design identified the source of the goods, but would view the slogan or design only as a decoration on the goods.

If you have received a notice from the USPTO stating that your registration has been refused on the basis that your mark as used on a specimen is merely ornamental, you should contact a trademark attorney to assist with an appropriate response.  The issue must be corrected according to the rules of the USPTO. One common mistake to avoid is submitting new pictures created after your application date or Statement of Use date. The USPTO Office Action specifically states that additional pictures and specimens can be submitted only if they were in use before the relevant use date, which would be the application filing date or the date you filed a Statement of Use.

USPTO Office Action Response Deadlines

As of December 3, 2022, the USPTO examining attorney must receive your response to an office action within three (3) months from the date it issued for the response to be considered “timely.” Some types of office actions have a shorter deadline. Therefore, it is very important that you carefully read your office action to determine the specific deadline for the response.  In some situations, the USPTO may grant you one three (3) month extension to respond to an office action for an additional $125 filing fee.

Note – if you have received an office action, please contact our office as soon as possible.  In order to appropriately and accurately respond to all issues set forth in your office action, there may be considerable research and investigation that will need to be conducted.  Further, if our trademark attorneys need to draft a formal response to your office action, there may be several rounds of review that need to be performed before submitting your response to the USPTO.  For those reasons and others, the more time we have to respond to your office action before the three (3) month deadline, the better!