Trademark Office Action
What to do when your trademark was rejected
Did you receive an office action on your trademark registration? Did you know that the trademark examiners at the United States Patents and Trademark Office (USPTO) can decide to stop your trademark application if they decided your application was not compliant with trademark law?
When a trademark examiner at the USPTO decides that your trademark application was defective for any reason, they will issue an official document known as the Office Action. Office Actions are NOT the final rejection letters. Instead, Office Actions are letters that explain why your trademark application was not proper. If you received an Office Action identifying problems with your trademark application, you can often address or correct the issues by filing a timely response. Our experienced trademark attorneys have helped turn Office Actions into approved trademarks. We are here to help your trademark application get back on track.
Common reasons for a trademark office action
There are a few main categories of trademark office actions - procedural and substantive.
Procedural Trademark Office Actions
If you made administrative and procedural mistakes while filling out the trademark application forms, you’ll likely get a procedural trademark office action. These can include anywhere from mistakingly filling out your entity type (did you register an LLC but put the trademark under LLP? I’m looking at your Jerry), to filing the trademark under the wrong class.
Substantive Trademark Office Actions
Your trademark application could be rejected due to substantive issues. These are much more challenging to fix and will require an attorney to provide a written answer.
Section 2(d) Likelihood of Confusion
If the trademark examiner discovered a trademark that is confusingly similar to the one you are applying, they might decide that granting you the trademark would cause consumers to be confused, and therefore rejects your application.
What does confusingly similar mean though? That’s the million dollar question. It is up to your trademark attorney to write a convincing response back to the trademark examiner that your brand is NOT confusingly similar.
Section 2(e) Descriptiveness
If the trademark examiner decides that your proposed trademark merely describes the generic nature of the goods or services offered, they might issue a 2(e) descriptiveness refusal.
Our trademark attorneys can help you respond to a Trademark Office Action
Contact us today for your trademark office action response