Many individuals and businesses from across the United States approach our office after filing an application for trademark registration themselves or after attorneys who do not focus on intellectual property issues have filed an application. (Of course, we encourage potential clients to see if our flat-rate trademark application services are a fit for them. Even if you use other attorneys for your other legal work, we are happy to take care of your intellectual property matters) When we hear from potential clients after they have filed an application, its typically because the USPTO issued an office action.
An office action is an official "no" to the application for registration. However, sometimes it is a "no, but if you do this easy thing, the application will pass." Sometimes it is a "no, you shall not pass." For those latter office actions, the client has to gear up for a fight. I've placed a trademark application flowchart at the end of this article so that you can tell where office actions fall in the process.What follows is not legal advice, but general information. Of course, every potential client has different sets of facts that lead to different results.
Section 2(d) and Section 2(e) refusals
Two of the most common reasons for the latter sort of office action are likelihood of confusion with an already registered mark or mere descriptiveness. A section 2(d) refusal for likelihood of confusion means that the USPTO's examining attorney believes that the mark you are applying for is too similar to an already registered mark. Perhaps a common law or knockout search would have caught the mark, perhaps it would not. Either way, you will need to argue with the examining attorney to show that your registration would not be likely to cause confusion.
A section 2(e) refusal for mere descriptiveness means the USPTO's examining attorney believes that the mark you are applying for merely describes the goods or services you are selling. That is, if you sell green shirts and you call your company GREEN SHIRTS, then you will likely get a Section 2(e) refusal. Here, the typical argument will to show your mark has acquired distinctiveness or that it is actually a suggestive mark, not a descriptive mark.
Should I fight a USPTO Office Action?
The question I always get from our clients is, "Should I fight it, or am I throwing good money after bad." Obviously, there are a myriad of factors that go into such an analysis. How invested in the brand are you? Do your facts tend to suggest a higher likelihood of success in overcoming the office action at the examining attorney level and the TTAB level? Is it a matter of principle for you?
I believe that for most companies with at least a moderate desire to secure a registration, attempting to convince the examining attorney to change her mind is worth the investment. Typically the fees are moderate and there is little other risk in failure. However, many examiners prove difficult to convince. If she is unmoved, the examining attorney issues a final office action refusing the application. After that, you can either seek reconsideration or appeal to the Trademark Trial and Appeal Board.
Should you take the fight to the TTAB?
TTAB proceedings will use the record developed at the Examining Attorney level. So, if you are missing key evidence, you can use a reconsideration to bolster the record in your favor. However, proceed with caution. You are also giving the Examining Attorney the opportunity to bolster her arguments and reject your application again. But, with bolstered arguments, you might have a harder time at the TTAB level. For this reason,
Again, a myriad of factors impact whether to appeal to the TTAB. However, I must report that there are some unfortunate statistics. In 2016, the TTAB affirmed
The Trademark Trial and Appeal Board affirmed well over 90 percent of Section 2(d) confusingly similar refusals in 2016. It affirmed around 90% of Section 2(e) descriptiveness refusals as well. Both are on the high end of recent years. However, this is certainly something to take into account when considering whether to appeal to the TTAB.