When the USPTO speaks: One of two major types of Office Actions

There are lots of potential obstacles you can encounter during the application process of a trademark. These obstacles come in the form of Office Actions from the USPTO. Receiving an Office Action can sometimes, though not always, mean that registration is refused by the Examiner. In this post we’ll discuss one of two major reasons why an Examiner may refuse your application.

Please note that an Office Action refusal is not final the first time it is issued. You usually have six months to file a response if you choose to do so. For the sake of your trademark attorney’s peace of mind, don’t wait until the last week of those six months to request that a response be prepared. The best thing to do is contact an attorney as soon as you receive an Office Action, so she can provide you with your options to respond.

Likelihood of confusion

This is by far one of the refusals we see most as trademark attorneys. If you’ve been with us this far, you’ve learned the importance of proper trademark clearance searches. The main objective of searching is to uncover prior users of the mark you have in mind, or one that is similar.

Often, I receive emails from entrepreneurs who filed a trademark application without searching and received a likelihood of confusion refusal. Essentially, this means that the Examiner located one or more existing registrations for identical or similar marks, registered for identical, similar, or related goods and/or services. The Examiner has refused registration on that basis and, in order to have a shot of proceeding, you must file a substantive response as to why your mark should be registered despite the prior existing registration(s).

Likelihood of confusion refusals are difficult to overcome, so it’s best not to handle these on your own. I advise consulting with a trademark attorney right away so you can understand how to proceed best.

Sonia Lakhany is an intellectual property attorney at Lakhany Law, PC. She specializes in trademark and copyright law, teaches and is a frequent speaker and blogger. Sonia is also active on several boards and committees in the Atlanta legal community.

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