Re: trademark office action

Patent & Trademark, Questions & Answers by Andrew P. Lahser, Attorney

  1. How is a trademark for trash removal confused with equipment rental?
    When the marks are identical, the services may be considered related if other, third-party companies commonly offer both services.
  2. After confusingly-similar refusal, can I still use my trademark?
    Probably not. Assuming the refusal is final and proper, you may have actual notice of trademark infringement. This may be willful infringment.
  3. Trademark Office Action: How to respond
    A Trademark Office Action is a legal proceeding where the Trademark Examiner rejects your trademark application. Learn how to overcome the rejection.
  4. Can you change a trademark's goods and services description?
    A trademark's goods and services description may be amended to limit or clarify; yet, not broaden the scope of the description.
  5. What if 'likelihood of confusion' is with a trademark I already own?
    You can claim ownership of a prior registration by amending your trademark application.
  6. Trademark Response: How do you present argument?
    Most importantly, be persuasive. There are few rules for the format of the argument. The electronic filing system prompts for most rules.
  7. Can I amend a trademark after rejection?
    Probably not. Trademark amendments are only allowed when there is no 'material alteration' of the mark, which will not be enough to overcome the refusal.
  8. Can I trademark a version of the US Flag?
    It depends, there are many registered trademarks that incorporate the US flag. To see examples of these registered marks, you can search.