Why Trademarks Are Rejected
Have you received a Trademark Office Action?
It’s actually pretty common: 84% of applications receive at least one Office Action.
Your application can be denied for a lot of reasons:
We’ve been successful at overcoming all of these denials.
We’ve fixed denials based on likelihood of confusion, descriptiveness, disclaimers, surnames, specimens, identification of goods, foreign translation requirements, and prior pending applications.
Here are our top tips:
Prove It
An Office Action means that the Trademark Office cannot approve your application at this time.
We don’t view this as an outright denial.
We view this as an opportunity to prove that your application does meet the legal requirements for approval.
Know Your Denial
The arguments that you need to make are different for each type of denial.
For example, there are certain factors you need to prove to resolve a likelihood of confusion denial. There are different standards you need to show to resolve a disclaimer denial.
There are times when it makes sense to disclaim a word and times when you should fight it.
In order to trademark your brand, you’ll need to know the proven way to overcome your denial.
Make a Legal Case
Trademark approvals are based on the law.
Your application won’t be approved until you prove that you meet the legal standards.
You probably have a ton of reasons why your trademark should be approved.
But unless you show that you meet the legal requirements, they won’t matter.
For example, there are legal standards you need to prove to resolve a likelihood of confusion denial. There are different legal standards you need to show to resolve a disclaimer denial.
It’s not about making a great argument. It’s about making a great legal case.
Be Careful
Your Office Action responses are final. Typically, you can’t reverse them.
For example, if you delete products or services, you can’t add them back later. Or if you argue something that you think is helpful, but legally it hurts you, you can’t reverse it later.
That’s important because your responses can prompt new Office Actions that are harder to fix.
Those sometimes result in your application being denied.
You need to be extremely careful in your response.
Respond on Time
You have to respond to the Trademark Office Action within six months.
If you don’t respond, your application will be abandoned.
You’d be surprised how many people never respond to their Office Action.
Their applications were completely fixable and their applications would easily be approved.
But they never responded.
You may not know the best way to respond. And that’s okay.
We can help.
Originally published at https://www.sproutlaw.com on October 19, 2020.
