When an application is filed with the U.S Patent and Trademark Office (USPTO) to federally register a trademark, the an application is assigned to a USPTO Examining Attorney for review. If the USPTO Examining Attorney assigned to your trademark application objects to the application, he or she will issue an Office Action. Office Actions may be issued for a variety of reasons.
Lack of Sufficient Distinctiveness There is a lack of sufficient distinctiveness when the mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods/services. A slogan may lack sufficient distinctiveness when the slogan is simply informational. Usually, a statement is merely informational when it is a statement ordinarily used in business or in a particular trade or industry. Mark is Merely Functional A functional mark is exactly what it sounds like it is: A mark that merely serves a function. To be a trademark, a mark must be an identifier. A mark is an identifier when it tells a consumer where the goods/services originate and helps consumers recognize the goods/services that the consumer wants. When a mark is functional rather than an identifier, the mark is not registrable. Mark is Generic A mark is generic when it employs a term that identifies products and services. Such a term can not be an identifier and is not registrable. Examples of generic marks include “computer software” or “facial tissues.” A truly generic mark can not be registered, because no manufacturer or service provider will be given exclusive rights to a mere good/service term. To overcome an Office Action on the grounds that the mark is generic, you must present arguments and evidence, if any, showing that the mark is not generic. Disclaimer Requirement A disclaimer is required when words or phrases within a mark are generic or descriptive of the goods/services in the application or otherwise not registrable. When you disclaim words or phrases in the mark, you are saying the mark owner does not have the exclusive right to use those words or phrases other than within the mark. Likelihood of Confusion with a Registered Mark Likelihood of confusion means your client’s mark is so similar to another mark that consumers will most likely be confused, mistaken, or deceived about the source of the goods/services. Misdescriptive Marks A mark is misdescriptive when a term misdescribes the character, quality, function, composition, or use of the goods/services. Misdescriptive marks include those that imply goods/services originate in one geographic location when, actually, they originate in another. Ornamental Marks Ornamental marks are merely decorative and do not serve as identifiers. Here’s a good tip to avoid an Office Action for an ornamental mark: remember that the larger the display of the mark relative to the size of the goods, the more likely it will not qualify as a trademark. Disparagement or False Connection Disparaging marks or marks implying a false connection may involve a person, institution, belief, or national symbol. Marks that demean a competitor or falsely imply endorsement by a celebrity are not uncommon. When an Examiner recognizes the disparagement or connection, an Office Action is issued. Name, Portrait, or Signature A name, portrait, or signature of a living individual is not registrable without the written consent of the individual. This protects an individual’s right of privacy or right of publicity. Surnames Marks that are merely surnames are treated the same as marks that lack distinctiveness. Title of a Single Creative Work A mark that is the title of a single creative work will be issued an Office Action. A single creative work includes books, DVDs, films, CDs, and theatrical performances. Trade Names When a mark is not employed as an identifier of the source of the goods/services, although it could be, then it may be merely a trade name. The best way to explain this concept is by example. If the mark is the name of a company, but is not attached to the goods’ labels or tags or displayed on the service advertisements, then it is a trade name. Domain Name To register a domain name as a trademark, the domain name must serve as an identifier. The complete mark, as provided on the application, must be included in advertisements of the services or on labels or tags of the goods. Otherwise, the mark will not be registrable. Immoral or Scandalous An immoral or scandalous mark will receive an Office Action. A mark is immoral or scandalous when it has an ordinary and common meaning that is “shocking to the sense of propriety, offensive to the conscience or moral feelings, or calling out for condemnation.”
When you disagree with the Examiner’s objection, you must submit arguments in favor of your position. This is an opportunity to convince the Examiner to approve your trademark, despite their initial reservations. Your chance of success is dependent, at least in part, on the individual Examining Attorney assigned to the trademark application. But, you can increase your chances of overcoming the Office Action by addressing certain issues that show you know and understand what the Examining Attorney wants from you.
Saper Law charges a flat fee of $500 to respond to the following Office Actions:
Word needs to be translated
Living person disclaimer or consent needed
Improper specimen for proof-of-use
Improper description or color claim of the mark
Incorrect identification or class of goods/services
Improper signature/signature needed
Supplemental Register amendment suggested
More complicated office actions involving a likelihood of confusion, descriptiveness, a combination of issues, or a refusal not listed above require a more detailed review. A quote for a more complicated office action will be provided by a Saper Law attorney prior to any engagement.