Trademark Rejections and Appeals Procedure

An examiner may write three kinds of action letters that constitute trademark application rejections:

  • Technical rejections. These usually involve minor or procedural matters that can be corrected by amendment as described earlier.
  • Substantive rejections. These usually involve issues such as potential confusion with another mark. Responding to these takes more effort and may well require the help of a trademark lawyer.
  • Final rejections. These usually are written only after you have been given at least one chance to respond to a technical or substantive rejection.

The examining attorney may notify the applicant of the basis for the rejection by telephone or mail. Often, smaller issues are resolved over the phone while more substantive issues require mail notification. PTO correspondence usually includes an adhesive-label caption with a mailing date. This caption can be peeled off and placed on applicant’s reply.

Rejections always specify how much time you have to respond (usually six months). If your response is not received within the time specified, you risk having your application deemed abandoned (which means you have to start over if you wish to pursue registration of the mark), so always send the response as early as possible.

If you receive a rejection, you have three choices:

  • respond to it yourself,
  • hire a trademark attorney to prepare the response, or
  • abandon your application.

Responding to an Objection Yourself

Whether you should respond to a rejection yourself depends on the nature of the problem and your comfort level in dealing with a trademark examiner. You’ll have to weigh both issues and make your decision.

In the event of an objection by the examining attorney, it may be necessary to amend the application or provide a response to a rejection. An amendment is a correction usually made in response to a request by the PTO. A response is a legal argument advanced by the applicant to overcome an objection. The reply should include the caption (an adhesive label peeled off the examining attorney’s letter). A response must be provided to the PTO within six months of the date of mailing of the office action. If not, the application will be deemed abandoned.

Common Rejections That Are Easy to Correct

Below are some common correctable errors that most applicants can rectify easily:

  • Incorrect name of applicant. The application lists the wrong trademark owner. For example, the founder of a company may mistakenly believe that he owns the mark, not the company.
  • Ambiguous authority for applicant. The authority and position of the person signing the application is ambiguous. Officers of a corporation, for example, should be specifically identified by their titles.
  • Using the class heading as listing of goods. Instead of identifying and describing the specific goods or services in the application, an applicant describes the goods by the International Class heading.
  • Scattered listing of goods. Applicant filed for a trademark in several classes but did not clearly group the goods in appropriate classes. The PTO prefers that goods be grouped according to class in the description of goods and in the drawing.
  • Incorrect or inadequate description of goods. The application does not accurately describe or reflect the goods or services. For example, the applicant describes the goods as “computer programs” instead of “computer programs and accompanying manual intended for use in instructional applications.”

Substantive Rejections Are More Challenging to Correct

The errors in the previous section were fairly easily to correct. However, certain objections by a trademark examining attorney require substantial effort to overcome. These objections are usually based on the statutory bars to registration established in Section 2 of the Lanham Act. These bars include:

  • Likelihood of confusion. The trademark examining attorney determines that the mark—when used on the identified goods—is likely to be confused with a registered mark. For example, a shoe manufacturer attempts to register Knike for shoes.
  • Generic or other disclaimed material. The trademark examining attorney determines that a portion of the mark is generic and must be disclaimed. For example, the owner of the trademark Nebraska Opry may have to disclaim the word Opry, as it is a generic term for country and western music entertainment. If the examining attorney determines that the complete mark is generic, then overcoming the objection is much more difficult. For example, in 2006, registration was refused for the term Fresh Organics on the basis that the term was a generic reference to “variety of fresh, unprocessed, and/or raw food items that have been grown organically.” (In re Nutraceutical Corp., Serial No. 78975072 (March 13, 2006).)
  • Descriptive mark. The trademark examining attorney determines that the mark—when used on the identified goods—is merely descriptive of the goods. For example, the mark Nasal No-Hair for a nose-hair clipper.

Sometimes extensive legal and factual arguments must be prepared to overcome objections. The procedure for preparing responses is documented in Nolo's trademark book and in treatises such as Trademark Registration Practice, by James E. Hawes (West), and McCarthy on Trademarks (West).

Hire a Trademark Attorney to Prepare a Response

It is almost never necessary to use an attorney to successfully respond to a technical rejection. Because this type of rejection usually is based on a clerical deficiency in your application, it does not take a legal education to figure out the correct response. Substantive rejections are another matter. This type of rejection is based on an examiner’s assessment that the mark itself doesn’t qualify for registration. Changing the examiner’s mind on this point requires advocacy skills and a good working knowledge of trademark law—both attributes of competent trademark attorneys. 

As desirable as it may be to use an attorney to help push your application through the PTO, this is almost always an expensive option. If you have a significant amount of money or business goodwill already tied up in your mark, then the expense may be justified. However, if you don’t have a lot invested in your mark, it may be the wiser course to handle the matter yourself, even though an attorney might get better results. Why? Pure economics. Keep in mind that you are only out $325 if you don’t succeed in your first application and need to file a new one.

This amount is roughly the same as the normal hourly fee charged by trademark attorneys—and fighting with the PTO can easily end up costing you $4,000 to $5,000 worth of an attorney’s time. Though you may not be able to register your chosen mark, there are plenty of other potential marks in the world. Let your answer to this question be your guide: Would you be willing to sell your mark for an estimated minimum attorney’s fee of $3,000 to $5,000 and use the money to develop a different mark?

Responding to the PTO Just Got Easier. The PTO provides an automated method of responding to office actions. You may find it easier to use this automated response system, rather than the traditional “snail mail” response, when replying to a PTO rejection or other office action. To access this automated response system, click “File Forms” under the word “Trademarks” at the PTO website (www.uspto.gov). On the next page choose “Response Forms,” then click “Response to Office Action.” Supply your serial number and then follow instructions to provide a response.

Abandon Your Application

If your application is based on actual use of your mark, your ownership of the mark will depend on the first date of that use. Registration itself does not confer ownership except when the application is based on an intent to use (in which case the filing date becomes the date of first use). If you already own your trademark, all registration accomplishes is giving the world notice of your mark and giving you a leg up (in terms of what you have to prove) if you end up in court in an ownership or infringement dispute.

Rather than pay an attorney or spend dozens of hours of your own time haggling with the PTO, you may be better off dropping your application and continuing to use your mark as you have before. This is especially true in the case of a descriptiveness rejection. If your mark is, in truth, descriptive, getting it registered will not offer much in the way of additional protection. If, however, the rejection is based on “confusion” grounds, then you should take a stern eye to the reasons for the rejection and decide whether you might be sued for infringement if you continue to use your chosen mark. You can expressly abandon your application by filing a Request For Express Abandonment (Withdrawal) of Application using TEAS

Warning About Abandonment

All abandonments are not equal. Here we are talking about abandoning an application, which will only result in the loss of whatever rights you would have obtained by completing the application. If, however, you stop using a mark over a period of time, or fail to maintain quality control over how the mark is used, you may be considered to have abandoned the mark itself, and therefore lose the exclusive right to use it. 

Also, if you filed an intent-to-use application, abandonment of the application may affect your ownership of the mark. For example, assume a business starts using the same or similar mark after you file your intent-to-use application but before you put your mark into actual use. If you follow through with your registration, then you can claim the original filing date as the date of first use and be considered the owner of the mark. If, on the other hand, you abandon the application, the other user will be considered the owner—because you will no longer be entitled to the filing date as your date of first use.

Final Rejection: An Objection That Cannot Be Overcome

If the USPTO determines that a mark is not registrable, a final rejection will be mailed to the applicant. In the event of a final rejection, the applicant can:

  • Appeal to the Trademark Trial and Appeal Board (TTAB). An appeal to the TTAB is made when the basis for the final rejection is substantive, for example, a statutory bar to registration such as descriptiveness or likelihood of confusion. For an up-to-date review of TTAB cases, check this blog. For USPTO rules for filing with the TTAB, check here.
  • File a Petition to the Director. A Petition to the Director is used when the basis for the rejection is that the applicant or the USPTO failed to adhere to procedural rules. For example, a final rejection that is based upon an improper time limit for response would be a procedural basis for a Petition to the Director.
  • Request further reconsideration. The applicant can request that the examining attorney make another examination of the mark.
  • Abandon or suspend the application. Abandonment of the application terminates the application process. Suspension of the application permits more time to prepare a response.
  • Amend the application to seek registration on the Supplemental Register (37 C.F.R. § 2.75). If the basis for rejection is that the mark is descriptive, the mark may still qualify for registration on the Supplemental Register (although you must give up the benefits of the Principal Register).
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