{3:00 minutes to read} Approximately four to five months after you file a trademark application, an examining attorney for the US Patent and Trademark Office (PTO) will review the application to make sure it conforms to the PTO standards and that the mark you’re applying for is eligible for registration. If there are any problems with the application, the examining attorney will issue an Office Action. Trademark owners then have six months to respond to that Office Action. If no response is filed, the application will be deemed abandoned.
It’s important to understand that bad news doesn’t necessarily mean the end of your journey to register your trademark. For example, sometimes only minor tweaks are necessary to overcome the objections raised in the Office Action, such as correcting a description of the services you’ll be providing to conform to the PTO requirements. Other refusals can be more complicated.
Two of the most common substantive refusals are:
- The trademark is confusingly similar to an existing trademark.
- The trademark (or a term in the trademark) lacks the distinctiveness necessary to be registered as a trademark.
If you filed your trademark application without the help of a trademark attorney and you’ve received a substantive refusal, then this is the time to get an attorney involved.
Examining attorneys for the PTO will often err on the side of caution when they issue a refusal based on an existing trademark. The examining attorney will put the burden on the applicant to plead its position. In many instances, these types of objections can be overcome by submitting a thorough response to the refusal, countering the examiner’s position.
If a cited mark is still in the application stage, you may be able to avoid having to submit arguments altogether. Only registered versus pending trademarks can ultimately block the registration of your trademark. If the cited pending trademark doesn’t ultimately register, the examining attorney will drop that mark as a potential obstacle to registration of your trademark. But, you should monitor this process (or get an attorney involved to do so). Suspended applications can sometimes fall into a black hole at the PTO, requiring blocked applicants to “nudge” the examining attorney.
Refusals that are based on a trademark lacking the distinctiveness necessary for registration can be trickier to overcome. In our experience, once an examining attorney has taken a position on this issue it can be difficult to convince him or her otherwise. But there are likely steps a trademark owner can take to put itself in the best position possible.
If you received an Office Action, forward it to our team at info@trademark-counsel.com. We’d be happy to review the document and provide you with a complimentary evaluation of your chances of success.
Kelly Weiner
Trademark Counsel
Law Office of Kelly Weiner PLLC
175 Varick Street, Fl 6
New York, New York 10014
(E) info@kellyweinerlaw.com
(P) 212.360.2307