Responding to Trademark Office Actions: 3 Tips to Overcome Refusals

Stacey C. Kalamaras | January 26, 2021

Receiving an Office Action is perhaps the most frustrating part of the trademark prosecution process. What’s the best way to proceed when the Office Action contains a substantive refusal of registration? Is your client’s mark doomed? How should you handle your client’s expectations and persuade the Examiner that this application should be approved for publication? In this guest blog post, Stacey Kalamaras shares her key tips for how to address this critical and sometimes scary part of the trademark application process. 

     1.     Respond in a Timely Manner

Every Office Action is a letter from the United States Patent and Trademark Office (USPTO) Examiner that outlines any deficiency with a trademark application. If you fail to respond in a timely manner to any Office Action, it will result in the trademark application being abandoned and the client potentially losing its application priority date. However, there are Office Actions that deal solely with administrative issues that are easily correctable - so correct them ASAP! Some of these Office Actions would include an amendment to an identification of goods and services, an amendment to a color claim or mark description, an entity clarification, or a claim of prior registration, to name a few. A more serious Office Action would involve a substantive refusal on any one of these grounds: merely descriptiveness, likelihood of confusion, merely a surname to name a few.

     2.     Agree to Administrative Requests 

Who among us has not had to amend an identification of goods or services or agree to a disclaimer? If you’ve been practicing in this area even for a little while, you’ve done both! To minimize the need to amend the identification of goods or services, be sure to use the USPTO’s identification manual and don’t get overly creative if you draft an identification free form for a particular client.  For disclaimers, most requests will be agreed to unless you and your client agree it’s worth arguing that the term is not descriptive. Then you will be submitting arguments. If the Examiner calls you and asks you to amend the identification (or agree to a disclaimer) over the phone or email, try and get back to them as soon as possible. That will keep your client’s application moving forward. If you have a specimen that is refused, you will have a chance to submit a substitute specimen. When you do, remember that the substitute specimen must be in use at least as early as the application filing date (and not the Office Action Response date). If your client cannot meet that threshold, you can always amend the filing basis to “intent to use” to preserve the priority date and save the application.

     3.     Do Your Research on Substantive Refusals

No one likes receiving a substantive refusal of registration – it adds costs and time to any application, but don’t despair. Although most of these cases are not winnable on appeal, a solid argument can persuade the Examiner, so take them seriously. Be sure to do a search before you file to better prepare you (and your client) for what the competitive landscape looks like and help inform how likely you are to overcome the refusal. Keep in mind these best practices when responding to a substantive refusal:

    • Remember you generally have up to six months to respond. Take the time, especially if you need to respond to a substantive refusal. There are no brownie points for responding early.
    • If you are responding to a substantive refusal, you must submit legal arguments to demonstrate why you disagree with the Examiner. Circular arguments such as “the mark is not likely to be confused because it’s not the same as the other mark” is not a legal argument.  Remember as a lawyer, it is your job to refute the Examiner’s evidence, supported by case law in order to be persuasive. With all the case law available, unless you (or your client, if you inherited the case) failed to do a search and the marks are identical, you should be able to find some cases that are helpful to your fact pattern.
    • Examiners cannot lift substantive refusals over the phone – do not call and ask them to.
    • Above all else, remember, the Examiners are not your opposing counsel. Don’t treat them as such. The Examiner has a job to do, just like you do. If you don’t understand something about the particular Office Action or refusal, call and ask them, but know they are not there to do your job. Make sure you are familiar with the rules of practice and if you need help, ask your colleagues and partners, not the Examiner.  It’s not their job to do your job, nor are they allowed to give you legal advice. 

To learn more, check out Stacey’s CLE program Responding to Trademark Office Actions: Strategies to Overcome Refusals and Successfully Persuade the Examiner.

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About the Author

Written by Stacey C. Kalamaras

Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. Stacey has managed large, global trademark portfolios in diverse industries around the world. What makes Stacey truly unique is that prior to becoming an attorney, she worked for more than a decade as a marketing and advertising executive in the consumer-packaged goods industry. This unusual combination of business and legal experience allows her to quickly establish herself as a trusted business adviser with her clients. Stacey has significant experience with global trademark clearance, registration and enforcement and development anti-counterfeiting strategies for her clients on a global basis. She is a frequent speaker on IP, trademark and anti-counterfeiting strategies. In January 2020, Stacey launched Trademarkabilities™ an online trademark academy for lawyers. She can be reached at info@klolegal.com.

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