USPTO Trademark Office Actions Overview

Understanding Office Actions

Trademark Office Actions are quite common. Approximately half of trademark applications filed with the United States Trademark and Patent Office (USPTO) result in the issuance of a Trademark Office Action. Let’s put that into perspective. According to the USPTO Performance and Accountability Report for the 2012 fiscal year, 311,627 new trademark applications were filed in 2012. The USPTO issued Office Actions against approximately 155,000 of these applications. Understanding USPTO Office Actions and the options available to the applicants receiving such Office Actions is therefore crucial for successful trademark registration.

Types of Trademark Office Actions

When a trademark application is filed with the USPTO, the agency assigns an examining attorney to the application. The examiner reviews the trademark application for formalities and also conducts independent trademark conflict searches to determine whether the applied-for mark is conflicting with a senior pending or registered trademark. The examiner issues an Office Action when there is a problem with the application or the applied-for trademark. In practice, the Office Action serves as an initial refusal to register the applied-for trademark unless the applicant can overcome the refusal to the examiner’s satisfaction.

Trademark Office Actions, or initial refusals, can be broken down into two general types of refusals: (1) substantive Trademark Office Actions, and (2) procedural, or non-substantive, Office Actions. Procedural, non-substantive, Office Actions take issue not with the proposed trademark, but with the manner in which it was applied for. For example, a non-substantive Office Action might require changes to the description of goods and services to comply with USPTO regulations. The examiner might also require disclaimers and corrections to the selected International Classes, depending on the applicant’s description of goods and services. Often procedural Office Actions will take issue with the specimens submitted with the trademark application and will require compliance with USPTO standards.

By contrast, substantive Trademark Office Actions will take issue with the underlying proposed trademark. Registration refusals in substantive Office Actions often attack proposed trademarks on the basis that the proposed trademark is conflicting with a senior pending or registered trademark (known as a 2(d) refusal) or that the proposed trademark lacks the necessary distinctiveness to allow registration of the mark. Trademark Office Actions, whether substantive or procedural, must be addressed within 6 months of their issuance to avoid abandonment of the trademark application.

Responding to Trademark Office Actions

One of the more challenging Trademark Office Actions to overcome without the proper assistance of a trademark attorney is the 2(d), or “confusingly similar,” refusal. In a 2(d) Trademark Office Action, the USPTO examiner identifies a senior pending or registered trademark and takes the position that the proposed trademark is confusingly similar, and therefore conflicting, with the senior trademark. To fully understand 2(d) Trademark Office Actions and how effective responses can overcome them, some trademark law background is necessary.

Trademarks are never protected in a vacuum. Each trademark is protected only in connection with a particular good or service. It is for this reason that the applicant must specifically describe in the application the goods or services offered in connection with the proposed trademark. In determining whether a conflict exists between two trademarks, the courts and the USPTO use a seven-part test, the “confusingly similar” test. In essence, the test seeks to establish whether the coexistence of the two trademarks will be likely to cause consumer confusion as to the source or sponsorship of the trademark users. Broadly speaking, the two primary elements are (1) the similarity of the two trademarks (in look and sound), and (2) the relatedness of the goods or services. To establish a trademark conflict, both prongs need to be satisfied. Therefore, one finds many examples of companies sharing trademark terms in various industries without conflict. For example, Delta Airlines and Delta faucets both use the dominant term “Delta” without conflict, because while the trademarks are similar, the goods/services sold in connection with each are completely unrelated. No reasonable consumer will be confused or assume an association between Delta Airlines and Delta faucets.

In a 2(d) Trademark Office Action the USPTO examiner will take the position that (1) the proposed trademark looks and sounds similar to the senior trademark, and that (2) the goods/services offered in connection with the proposed trademark are related to the goods/services offered in connection with the senior trademark, such that it is likely that consumers would be confused by the coexistence of the two trademarks.
The form that a Trademark Office Action response takes largely depends on the nature of the conflict at issue. If, for example, there are obvious variations and differences between the two trademarks, the response would focus on the fact that consumers will not be confused by coexistence of the trademarks due to the visual and phonetic differences between the marks. The response might also highlight that the goods/services offered in connection with the two trademarks are sufficiently unrelated, such that consumers will not be confused. Merely making these arguments without providing supporting case law, however, will likely not overcome an examiner refusal. A trademark attorney handling a 2(d) Office Action response should conduct proper legal research and compile numerous past USPTO and court cases similar to the one at issue in order to support registration of the proposed mark.

Successful 2(d) Trademark Office Action responses will effectively tie highly relevant case law and legal precedent with the particular facts at issue in order to forcefully argue for the registration of the proposed mark. As an example, we recently represented a fashion company that applied for a trademark for its low-end clothing line. The company received a 2(d) refusal a few months later, in which the USPTO examiner refused registration because there was an identical trademark registered in connection with jewelry. Our position was that reasonable consumers would not be confused by the coexistence of the marks and that they would not assume an association between the two companies. The cheapest item sold by the jewelry company was priced at $27,000.00, while the most expensive clothing item sold by our client was priced at $75.00. Our position was that the disparity between the values of the respective products was so great that reasonable consumers could not possibly be confused by the coexistence of the trademarks. While this was a perfectly legitimate argument to make, without supporting legal precedent the argument would be a hollow one. To provide force to our argument, we located and cited a federal case by the name of Lebow Bros., Inc. v. Lebole Euroconf. In the Lebow case, the federal court found no conflict between two almost identical trademarks where both marks were used for men’s suits, even though both manufacturers sold their suits in the same stores. The court reached this conclusion because there was a significant difference in price between the plaintiff’s suits and the suits sold by the defendant. The court reasoned that consumers would exercise a high degree of care when purchasing the plaintiff’s expensive suits. This case, among others, provided us with the support we needed to effectively make the case for the registration of our client’s trademark, which we ultimately successfully accomplished.

An effective trademark attorney will review the circumstances in their totality, along with legal precedent, to determine the strongest arguments in a particular case. What might be an effective argument in one case may be a weak one in another. It is therefore important that Trademark Office Action responses be properly tailored to the facts at issue.

How We Handle Office Action Responses

To save you time and money we typically separate Office Action responses into two phases. First, we carefully review your Office Action and provide you with analysis and a recommended course of action. The second part is the implementation phase, where we implement the recommended course of action. Because some objections likely will not be overcome, breaking up the process in this manner could save you on office and attorney fees. Moreover, it gives you an opportunity to consider your options carefully and make an informed decision based on your budget and needs.

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