How to Address the Three Most Common Trademark Office Actions

Applying for a trademark is a significant step in protecting your brand, but many applicants receive an Office Action from the United States Patent and Trademark Office (USPTO). An Office Action is an official letter outlining legal or procedural issues with a trademark application. While it may seem discouraging, most refusals can be addressed with a well-prepared response.

Below are three of the most common reasons applicants receive a Trademark Office Action and steps to resolve them:

1. Likelihood of Confusion (Section 2(d))

Issue: The USPTO may refuse a trademark if it is too similar to an existing mark that covers related goods or services. The concern is that consumers may confuse the two brands, leading to a "Likelihood of Confusion" refusal.

Potential Solutions:

• Demonstrate differences in commercial impression. If the marks differ in appearance, pronunciation, meaning, or overall impression, emphasize these distinctions in your response.

• Limit the description of goods or services. If the conflicting mark operates in a different market segment, modifying your description may reduce the overlap and eliminate the conflict.

• Obtain a coexistence agreement. If the owner of the cited trademark agrees that both brands can exist without confusion, a signed agreement can help overcome the refusal.

  
  

2. Merely Descriptive or Generic Mark (Section 2(e)(1))

Issue: If a trademark merely describes the product or service it represents, the USPTO may reject it as "merely descriptive." For example, the mark "Cold & Sweet" for ice cream would likely be refused. If a term is widely used by competitors, it may be deemed "generic" and ineligible for registration.

Potential Solutions:

• Prove acquired distinctiveness. If the mark has been in long-term use and is recognized by consumers as a brand, evidence such as advertising expenditures and consumer declarations may help establish secondary meaning.

• Amend the application to the Supplemental Register. If the mark is descriptive but not generic, registering it on the Supplemental Register provides limited protection while allowing the mark to acquire distinctiveness over time.

• Modify the mark. If the mark is too descriptive, adding a unique or arbitrary element may strengthen its distinctiveness.

  
  

3. Specimen Refusal – Incorrect Proof of Use

Issue: The USPTO requires a "specimen" to show that the mark is in actual use in commerce. Common reasons for rejection include submitting digitally altered images, mockups, or specimens that fail to demonstrate a clear association between the mark and the goods or services.

Potential Solutions:

• Submit a proper specimen. Acceptable specimens for goods include labels, tags, packaging, or website screenshots showing the product for sale with a functioning purchase option. For services, marketing materials, website screenshots, or service menus can be used.

• Ensure proper trademark placement. The mark should be prominently displayed in a way that consumers perceive it as a brand identifier.

• Consider an Intent-to-Use (ITU) amendment. If the mark is not yet in commercial use, changing the filing basis to Intent-to-Use allows additional time to submit a valid specimen.

  
  

Conclusion

Receiving a Trademark Office Action is not the end of the process but rather an opportunity to refine and strengthen the application. Each refusal requires a tailored response backed by legal reasoning and, in some cases, additional documentation.

If you have received an Office Action and need assistance in preparing a response, contact our office for a consultation! Properly addressing the USPTO’s concerns can increase the likelihood of approval and secure your trademark rights.