Forming a brand is an important step in building a business or connecting with others in an organized way. From nonprofits to corporations, trademarks are an important part of creating that brand identity. These logos and phrases become not only a visual representation of who you are but how others will build trust around you. Unfortunately, not all trademarks are approved. This could leave you wondering, “What would cause a refusal or office action by the USPTO?”

The United States Patent and Trademark Office has a responsibility to ensure that trademarks are registered correctly. This ensures that one entity does not infringe upon the business of another. Understanding refusals and office actions can help empower you to build your brand with confidence.

Office Actions by the USPTO

Upon your initial application for a trademark, you and your attorney can do due diligence in researching trademarks that are already registered. This can ensure that yours is unique enough that it won’t be confused with another. However, this initial search sometimes may not find everything. Your submitted application, therefore, goes through an additional screening by the USPTO and their representative attorneys. If there are legal problems with your trademark or application, you could receive an office action.

The letter will outline the revisions you need to make to your application prior to any resubmission so that it meets all the legal qualifications. The revision could be as simple as clarifying the exact goods and services that you offer.

In some cases, the letter may be an outright refusal of the trademark. If this occurs, it is likely because the trademark is too similar to that of another company or entity. This similarity could cause confusion to consumers. While you can often respond to an office action with further application clarifications, you may or may not be able to do so to a refusal.

Causes for an Office Action

There could be a number of reasons why you may receive an office action from the USPTO. However, there are some common triggers for such an action. These include:

• Similarity to other trademarks. The Lanham Act, the law governing trademarks, outlines the rules by which trademarks must follow. By this law, trademarks may not be approved if they are likely to cause confusion with others that are already registered. The belief is that a consumer may buy your product while thinking that they are buying one from another brand. This mainly applies to trademarks that are for companies within the same marketspace and not those that offer different products.
• The trademark is too descriptive. While it may seem that providing more detail is better than not enough, too much description in a trademark can be a bad thing. Some trademarks, however, only rely on the description within them to build the brand. This could mean relying on a surname or a geographic location within the trademark to differentiate it. However, this could limit your trademark to approval on the supplemental list and not in the trademark database.
• Disclaimer requests. A disclaimer may be one of the most common types of trademark issues. This is where part of your trademark needs a sort of asterisk to differentiate it. For example, if you wish to trademark “Delta Tickets,” you may need to provide a disclaimer for the word “Tickets” to differentiate it from the airline’s direct sales.
• The trademark does not qualify for protection. Trademarks that are denied because they cannot be protected are often refused because they represent the name of someone other than the applicant, are using a regularly recognized public image, or for a number of other reasons.

These common reasons for denial are not indicative of the totality of refusals or office actions, but they do represent a handful of issues to avoid when filing an application. Before filing, you should speak with an attorney who can help you navigate some of these difficulties before they arise.

FAQs

Q: What Are the Grounds for Opposition to the USPTO?

A: Grounds for opposition are the reasons why you would oppose someone’s trademark that was approved by the USPTO. Opposition may arise from any of the common reasons for a trademark refusal, but it may also come from an abandonment of the trademark, cases of fraud, or a dilution of the trademark. Under a dilution, the applicant must be able to prove that the recognizability of the trademark has declined and is now less distinctive.

Q: How Do You Respond to a Trademark Refusal?

A: When facing a trademark refusal, you and your attorney can work to respond to the action in one of several ways. These include:

• Ask for the application to be reconsidered.
• Appeal the refusal.
• Amend the application per the refusal feedback.
• Provide supporting evidence to contradict the refusal.
• Do nothing and allow the trademark to be registered on the supplemental registry.
• Outright abandon the application.

Q: What Cannot Be Trademarked by the USPTO?

A: While there are a number of ways to qualify for a trademark, there are equally a number of reasons why a trademark may be disqualified. Things that cannot be trademarked include:

• Misleading names, words, or descriptions
• Descriptive or decorative words and features
• Terms that apply to everyday products or goods
• Words and phrases that are considered disparaging
• Flags, symbols, or other representations that are unique to a government entity

Q: How Long Will It Take Before I Know If My Application Was Accepted by the USPTO?

A: The USPTO will process applications for trademarks on a first-come, first-served basis. If there are issues with the application, the USPTO will return the application with the appropriate office action letter or statement of refusal. If, however, your application is approved, you will be notified months after your application has been received.

Denver Trademark Attorney

Trademarks are an exciting step forward in building your brand. Knowing the complications that you can face and how to navigate them if they arise is an important step in keeping your brand moving forward. If you have questions about your trademark application or have received a letter of refusal or office action, contact the knowledgeable and experienced attorney at Four Reasons Legal. Our firm can help you advance your brand.