Founding Attorney
You chose the name, you paid the fee, and now the USPTO has told you no. The USPTO typically issues refusals through something called an Office Action, and it is an ordinary part of trademark examination, rather than the end of your application. The examining attorney must tell you the reasons for the refusal, and you have a set period to reply or amend your application. What you cannot do, however, is let the date pass without addressing all issues in the Office Action. An Austin trademark attorney can read the refusal, identify what it will take to overcome, and get the response on file in time.
What the Examining Attorney Is Actually Telling You
When a trademark application is found to not be entitled to registration, the assigned examiner must notify the applicant of that finding and of the reasons behind it. The applicant may then reply or amend the application, and the application is reexamined. That exchange can occur again until the examiner issues a Final Office Action refusing the mark or the application becomes abandoned if an applicant does not timely respond to an Office Action.
Refusals largely fall into two families. Procedural refusals ask you to fix something about the filing, such as an unacceptable specimen, an imprecise description of goods, or a missing disclaimer. Substantive refusals say the mark itself is not registrable under the standards Congress wrote into the statute. The most common substantive grounds include:
- A mark so resembles a registered mark, or a mark or trade name previously used in the United States by another and not abandoned, that confusion, mistake, or deception among consumers is likely (commonly referred to as a “likelihood of confusion” refusal)
- A mark that is merely descriptive or deceptively misdescriptive of the goods or services it identifies
- A mark that is primarily geographically descriptive of those goods or services
- A mark that is primarily merely a surname
- Matter that, taken as a whole, is functional
Sorting your refusal into the right family shapes everything after it. A specimen problem may often be solved in an afternoon. A likelihood of confusion or merely descriptive refusal typically takes more time.
Not every Office Action calls for a written response. The USPTO’s published guidance explains that some actions, including an examiner’s amendment or a priority action, invite you to resolve minor problems by phone or email with the examining attorney, and that some require no response at all. Read the title of your Office Action and the deadline printed on it before you start drafting.
Your Deadline Depends on How You Filed
Every Office Action states its own deadline, and the default is not the same for every applicant. For some applications, such as those filed under Section 1 or Section 44 of the Act, the rules of practice set a three-month response period running from the issue date of the action. Those applicants may generally buy one additional three-month block by filing a timely request and paying the required fee, which brings the outside limit to six months from the issue date. The request has to reach the Office on or before the original deadline.
Other Office Actions, such as Section 66(a) matters, get six months from the issue date instead. Section 66(a) matters are the requests for extension of protection that arrive in the United States through the Madrid Protocol from an international registration, and once here, they are examined as applications for registration on the Principal Register. Responses and extension requests both have to go through the Trademark Electronic Application System, and anything sent by email or fax is not accorded a date of receipt at all. Which form you file depends on the action you received. The USPTO’s guidance for applicants answering an Office Action directs you to the TEAS Response to Office Action form for a Nonfinal Office Action and the TEAS Request for Reconsideration after Final Action form for a final one.
If you miss the period, including any extension you were granted, the application is considered abandoned and you will not be able to take further action unless you successfully revive the application.
Building a Response That Answers the Refusal
A good response should address all of the specific points made in the refusal. Address every ground the examining attorney raised, separately, and give the record something new to work with. Conclusory statements without evidence or legal support leave the examiner nothing to weigh.
What that looks like in practice depends on the ground for refusal:
- For a likelihood of confusion refusal, compare the marks and the goods honestly, then build the record on the differences that matter in the marketplace rather than the ones that only matter to you. The USPTO considers a number of factors in weighing a likelihood of confusion refusal.
- For a descriptiveness refusal, you can argue the mark is suggestive or claim that the mark has become distinctive of your goods or services in commerce. Alternatively, you can amend your application to the Supplemental Register if the application qualifies,
- For a claim of acquired distinctiveness, the USPTO may accept proof of substantially exclusive and continuous use as a mark in commerce for the five years before the claim is made as prima facie evidence.
- For a specimen or identification requirement, replace or amend rather than argue, since these issues are generally the least time-consuming to resolve.
What Changes After a Final Refusal
After reviewing your response, the examining attorney may issue another nonfinal action or may make the refusal final. A final action narrows the road considerably, and the rules spell out what you may file at that stage:
- A request for reconsideration that seeks to overcome the refusal and comply with any outstanding requirement;
- An appeal to the Trademark Trial and Appeal Board; or,
- A timely request to extend the time to respond or appeal where that extension is available to you.
A fourth door opens where the Final Office Action leaves only a procedural requirement standing, because some procedural requirements can be taken to the Director by petition instead.
Applicants should keep in mind, though, that filing a request for reconsideration does not stay or extend the time to file an appeal. A reconsideration request that fails to clear every refusal and requirement, filed without a timely appeal or petition alongside it, may leave the application abandoned for an incomplete response. Reconsideration and appeal are not sequential steps, and treating them as though they were is how a registrable mark may not register as a result of a timing misstep instead of a genuine issue on the merits.
An appeal is taken by filing a notice of appeal and paying the appeal fee for each class you are appealing, within the same response window. If no appeal fee is paid for at least one class before that time expires, the application is abandoned. Your brief is due within sixty days from the date of the appeal, and the record should already be complete when you file, because new evidence that is not otherwise in the application’s record generally should not be introduced on appeal. Our intellectual property attorneys in Austin can help ensure a trademark record includes the relevant evidence prior to appeal.
If the Deadline Has Already Passed
An abandoned application may not always be gone. Where the delay in responding was unintentional, the applicant may file a petition to revive the application. The petition is due within two months after the issue date of the notice of abandonment. An applicant who never received that notice has a second path, running two months from actual knowledge of the abandonment and no later than six months after the electronic records system shows the application as abandoned, supported by a declaration of non-receipt.
A revival petition carries the petition fee, a statement signed by someone with firsthand knowledge that the delay was unintentional, and either the response to the Office Action or a statement that you never received it. If the action carried a three-month period and you are not claiming non-receipt, the extension fee comes with it. Where the abandonment followed a Final Office Action, there is more to assemble, because the response may then be treated as a request for reconsideration and the appeal or petition question has to be answered alongside it. Applicants should move quickly either way. These windows are short and they do not reset.
Talk With an Austin Trademark Attorney About Your Refusal
A refusal is a deadline with an argument attached to it, and it is beneficial to act promptly by getting counsel involved early. Our firm handles both Texas state and federal trademark registration for Austin founders, creators, and business owners, from the clearance search through the response that keeps an application alive. If an Office Action is sitting in your inbox, or a date has already slipped past you, contact the Kumar Law Firm to schedule a consultation and find out what steps may still be available for your application.