18 Ways to Overcome a Trademark Application Refusal
The Trademark Application Process
Many people mistakenly think that the application process is complete after you submit your trademark application. This could not be farther from the truth! Instead, one of the most important parts of the application process begins after you have submitted your application. This is the part where you have to respond to the examining attorney’s inquiries.
Approximately 3 months after you submit your trademark application, the government will assign an examining attorney to your file. This is the trademark attorney responsible for reviewing your application to see if it meets the federal criteria for trademark registration. For clarification, this attorney does not represent you but represents the government’s interests.
What is an Office Action?
An examining attorney will usually contact you with an Office Action. An Office Action is an official letter from the USPTO examining attorney that may ask questions regarding your application or list additional requirements that you need to meet in order for them to consider approving your registration. Additionally, an Office Action also may include their reasons for denying your application and give you an opportunity to respond.
Either way, once you have filed your trademark application, it is imperative that you reply to the examining attorney by their deadline. The deadline will always be included in the letter and is usually 6 months from the date they issue the office action. It is your responsibility to keep up with the deadlines and file your responses accordingly. The USPTO will not send you reminders. If you do not respond by the deadline, they may terminate your application and require you to start the entire process over again! This means you have to repay the filing fees because they are non-refundable.
How to Overcome a Trademark Application Refusal
Receiving an Office Action from an examining attorney is very serious – but not impossible to overcome. Here are a few ways you can respond to the examining attorney’s Office Action and overcome a potential refusal of your registration. Our firm has successfully used many of these strategies to get our clients’ trademark applications approved.
- Submit arguments against the refusal
- Attach supporting evidence in support of your argument against the refusal
- Submit a disclaimer
- Turn in a stippling statement
- File a section 2(f) claim
- Submit a consent to register names likenesses signatures of individuals
- Make a supplemental register Amendment
- Make a concurrent use claim
- Submit a new drawing of the mark
- Submit a better quality image
- Pay an additional fee for an existing class
- Submit the $50 fee for losing TEAS Plus status
- Submit a signed declaration to verify an application
- Modify the identification of good and or services
- Change the filing basis
- Add modify dates of use
- Submit a new or substituted specimen
- Submit a foreign registration certificate
Again, if the application is not approved, the government will not provide you with a refund. Therefore, you want to make sure that you are confident in your application and your Office Action responses. As a result, your trademark the best chance at first-time approval.
Many of our clients have peace of mind knowing that responses to Office Actions are included in our trademark registration service so they do not have to worry about missing a deadline and losing their trademark rights to someone else.