When responding to a trademark office action, you need to consider:

  1. Any statements you submit to the Trademark Office may be later used against you;
  2. The statements of the trademark examining attorney might be used against you if you do not present argument or evidence to clarify or rebut the examiner’s position;
  3. If there is a “likelihood of confusion” with another trademark;
  4. If the trademark may be “descriptive” or generic term for the stuff in your goods and services;
  5. Any other grounds for refusal, for example, formalities, trademark samples, ornamentation, geographic significance, deceptiveness, false connections, etc.;
  6. What kind of evidence was presented by the trademark examiner;
  7. What types of evidence are available to you to support your trademark;
  8. What will be the impact of limiting or clarifying your trademark;
  9. What relationship you have to any third-party who’s trademark may be mentioned in the office action; and
  10. Whether and how you should interview the trademark examiner.

In other words, when the Trademark Office refuses or rejects your trademark application, a miniature proceeding (just like a case in a court of law) begins. These proceedings usual have just one or two legal issues. Yet, they are formal. They are governed by a set of rules that has over 1360 pages and 19 chapters.  They create permanent, public records. The Government is represented by a successful, full-time trademark lawyer (the trademark examiner). The trademark examiner may be busy reviewing a minimum number of trademark applications each month. A trademark registration proceeding may take years to resolve. There may be options for finding a resolution and getting a trademark to register that are not suggested or known by the examining attorney. Hopefully, this article will help you to consider additional legal strategies to overcome the examiner’s rejection and allow your trademark to register.

By reading to the end of this article, you may better understand the legal strategies and tactics used to respond to a trademark office action or trademark rejection. This article is not legal advice, and, you should not rely solely on this article. Please consult your own attorney or primary legal sources, such as the Trademark Manual of Examining Procedure (link).

1. How Trademarks Work To Protect Consumers

Understanding how trademarks work is the foundation for a convincing, persausive argument to overcome the examiner’s trademark rejection. The primary issue in trademark law is “confusion”. That is, trademark law protects consumers from becoming confused about who is selling them stuff.

To say another way, you have applied for a trademark, but the law protects your customer so that your customer does not believe they are receiving your stuff when a competitor marks his stuff to look like your stuff. The law will also protect your potential customers.

Actual confusion occurs when your customer calls your competitor (or vice versa). Actual confusion should not be usually be an issue in a Trademark Office action proceeding. Instead, the Trademark Examiner will consider the “likelihood of confusion.” To determine the “likelihood of confusion” the trademark examiner pretends to be a reasonable consumer and discusses theoretically how this consumer might be confused between your trademark and those trademarks filed before yours.

Confusion always considers the trademark (the words, logo, design or other elements) and what is being sold (the “stuff”). Unless a mark is very famous, most consumers will not be confused by the same mark being sold for very different goods. So, “Zip” could be a brand for “fast food restaurant services” and “Zip” could be a brand for “medical equipment”, and there would be no likelihood of confusion. So, the legal term for stuff is “Goods and Services Description”, which is the legal definition for the boundary of the protection for your trademark. This works similar to a “metes and bounds” description for a parcel of land (real estate).

When your definition of “stuff” so resembles the commercial terms used to describe the stuff, the examiner may refuse registration. Consider registering a trademark for selling apples using the term “Apples”. If you had a trademark on the term “Apples” to sell apples, you could prevent all competition from using that word, so this type of usage is not allowed, because you would effectively prevent people from selling apples all together (this doesn’t help the consumer). However, “Apple” for selling computers, music, electronics, and so on, would be a fine trademark.

There may be other kinds of trademark rights, such as, common law rights, trade dress, unfair competition, and dilution. These rights should not be issues in a trademark proceeding.

2. Speak Carefully: How Your Statements to the Trademark Office may be Later Used Against You

When you respond to a trademark office action, you create a permanent, public record of your response. Since anything you write to the Examiner may convince that Trademark Office to register your trademark, a clever competitor’s lawyer may be able to use those statements later to narrow the protection or scope of your Goods and Services Description. This legal principle is called “estoppel”. Estoppel means that a court may deny your later statements or claims (for example, when enforcing your trademark rights against a competitor) that are contrary to the statements that you make to the Trademark Office to obtain the trademark registration.

When making argument to the Trademark Examiner, consider how a competitor might use that same argument to later limit the scope of your description of goods and services. Play devil’s advocate with your own evidence and arguments. Many times, multiple types of arguments and evidence are available, any of which may convince the examiner to allow the mark to register. Avoid arguments, if possible, that discuss how consumers do not become confused between your trademark and the trademark of another.

3. Read Carefully: How Statements of the Examining Attorney may be Later Used Against You

Sometimes, the Examining Attorney may suggest an alternative description of goods and services, changes to your mark, or other amendments. While presenting this argument, the Examiner may make additional (and perhaps unnecessary) comments or arguments. If follow the Examiner’s suggestion without presenting corrective arguments or evidence, a clever lawyer may later argue that you acquiesced to the Examiner’s statement. You may not be able to present your arguments in a later proceeding where you are trying to enforce your trademark rights. If you have different reasons or a factual basis for accepting the changes presented by the examiner, you may wish to present your additional evidence or arguments, even when you follow the Examiner’s suggested course of action.

4. Responding to a Trademark Office Action refusal based on a “Likelihood of Confusion”

If a consumer would be confused between two trademarks, then the later filed trademark may not register. To show confusion, the examiner must provide evidence or arguments to show:

  • a similarity between the trademarks; and
  • a relationship between the goods and services.

Generally, you will need to consider your trademark and the earlier-filed trademark presented by the examiner to determine the following:

  1. Do the trademarks have the same or similar appearance, sound, meaning and commercial impression?
  2. Are the “Goods and Services Descriptions” related?
  3. Are there related, established, likely-to-continue channels of trade?
  4. What are the conditions under which consumers buy? Impulse buying at a retail store? Commercial purchasing? How are sales made?
  5. What other and how many trademarks are in use on similar goods purchased by consumer?
  6. Is there a valid consent agreement between you and the owner of the previous trademark?

However, anything that tends to show that a consumer may or may not be confused may be submitted as evidence or argument. To overcome the Examiner’s refusal, you should present evidence (and not merely write back with an argument). Anything that helps to show that the consumer may not become confused may be submitted as evidence. For example, if the consumer is already distinguishing between many trademarks that are all similar, you may present the registration certificate of other marks that you wish the examiner to consider. For example, if you what to show the conditions under which consumers buy, you can present evidence of those conditions.

There may be special considerations for different types of evidence. When presenting listing from search engines, also include the pages that the search engine finds. Pay-per-click advertising statistics might be creatively used to show the relationship (or non-relationship) between goods and services. Yellow page advertising listings, state trademark databases, and other traditional trademark search tools can be good sources of evidence. Trade journals, newspaper articles, and other periodicals can be good examples of how trademarks are used, when available.  If the testimony of an expert needs to be submitted, then an affidavit may be required.

Obtaining consent to register agreement may be unlikely, but, usually highly-persuasive method of overcoming the examiner’s rejection. To obtain consent to register agreement, you must contact (preferably through your attorney) the registrant of the previous mark and ask them to agree to allow you mark to register. There are a few risks to asking a prior trademark owner to agree to your registration:

  1. The trademark owner will incur some legal expense to consider your consent agreement.
  2. There is usually no advantage to the trademark owner to agree to the consent agreement.
  3. If the trademark owner has plans to expand his products or services to include yours.
  4. The trademark owner may now know about your trademark when they previously did not know. Some trademark owners aggressively pursue trademark policing and monitoring.

Yet, consent agreements can happen under appropriate circumstances. Generally, these are most useful when the Examiner presents evidence of a relationship between your trademark and another trademark, but, no real relationship exists. In other situations, there may be a real relationship between the owners of the trademarks.

6. How to Respond to a Generic or Descriptiveness Trademark Rejection

When the trademark examiner says that your trademark is “descriptive” or “generic”, the trademark examiner is refusing to allow registration because your selected trademark describes the “stuff” that you are provided with your trademark.

If the examiner claims that the mark is “generic”, you can only present evidence that the trademark is not generic. Dictionary definitions can show the generic means of terms. A significant quantity of evidence may be needed because you are trying to prove how the term is used (and that it is not the common term for the goods and services that you wish to provide with the mark). Overcoming “generic” refusals can be difficult. The more evidence that you can provide for how the term is used, the stronger the arguments that you can make. Consider newspapers, journal articles, or any other media that uses the term generically to show that the use of the trademark is not the same at the use of the goods and services.

If the examiner refuses because the mark is “descriptive”, you may also present evidence and arguments showing usage that. Additionally, you may amend to the supplemental register. The supplemental register (rather than the primary register) allows some trademark rights, including marking your trademark with the ® (pronounced “circle r”) symbol. The primary benefit of registration on the supplemental register is the presumption of acquired distinctiveness after five years of registration. After this time, the mark may be amended to the primary register.

Additionally, a trademark can overcome a “descriptiveness” refusal by presenting substantial evidence that the market has come to know your goods and services by this trademark. Usually survey evidence or significant showings of ongoing and sustained advertising across the country may be needed.

7. How to Narrow, Limit or Clarify your Goods and Services Description to Overcome the Examiner’s Trademark Rejection

For example, if you originally wrote your Goods and Services description to include “business consulting” and you consulted with business to help them become more environmentally friendly. If the examiner refused registration for a similar mark in “advertising services”, you might amend your Goods and Services Description to include “business consulting to promote environmentally friendly operations”, which further distinguishes the services offered by each trademark.

You cannot change your Trademark after filing

Because trademark rights begin as of the day of filing, changes to the trademark are not allowed. The filing provides notice to the public that you claim this trademark, so changes to the trademark are inherently unfair to the public.  Sometimes, minor changes are allowed, for example, to correct shading problems, to remove or add color to the mark, or to correct spacing issues caused by fonts. Changes such as these may be at the discretion of the examining trademark attorney

8. You may Wish to Interview with the Examining Trademark Attorney

The Examiner may grant you an interview to discuss the refusal of registration. You may wish to interview the Examiner if it appears that the trademark examiner misunderstood the nature of your goods of services or misunderstood some other aspect of your trademark application. Please keep in mind:

  1. The trademark examining attorney is acting in an official capacity, just like as a judge. You may address them as “Examiner” or “Mr.” or “Ms.”, rather than by first name.
  2. The interview is usually conducted by telephone by simply calling the examiner. Being polite is helpful and required.
  3. Be prepared with your trademark and the serial number.
  4. Have any questions or arguments prepared ahead of time.

Since interviews need not be recorded or transcribed, they may not directly become part of the permanent record of the file. The trademark examiner may make notations to the file or reference part of the discussion in a future office action.

Final Thoughts

The best responses to a refusal register a trademark includes arguments, backed by corroborating evidence that do not limit the goods and services description any more than required to obtain a registration. This article presents various approaches to finding arguments. This article will not substitute for the counsel of a trademark attorney that can identify the best and most creative arguments. This article does not consider the best ways to create a record that fully supports an appeal.