At any point after filing a trademark application you might receive correspondence from the U.S. Patent and Trademark Office (USPTO). In some cases this might be an Office Action, which can delay the application process. Others are standard to certain types of applications.
After receiving any of these notices, you the applicant will likely have to take action. Consulting a trademark attorney might be the most prudent action. But before you do, consult this list to understand the true nature of the USPTO correspondence.
Section 2(d) – Likelihood of confusion
Trademarks distinguish one company’s products or services from the rest of the market. McDonald’s owns the trademark on “Big Mac” to distinguish it from other burgers. If another burger joint were allowed to name their burgers Big Macs, they would benefit from McDonald’s brand and marketing. Trademarks prevent this kind of consumer confusion.
If your trademark filing bears resemblance to an existing registered trademark, the USPTO may issue a trademark Office Action under Section 2(d) on the basis of likelihood of confusion.
The USPTO can claim likelihood of confusion if they consider the mark likely “to cause confusion, or to cause mistake, or to deceive.” These are highly subjective terms. In order to overcome a Section 2(d) Office Action, you’ll have to prepare an airtight defense of your mark and how you intend to use it.
While receiving a likelihood of confusion Office Action may hamper your trademark application, you do have recourse. After all, there is Dove soap and there is Dove chocolate. Marks can coexist if they cover unrelated types of goods or services. Perhaps the existing mark uses common industry jargon that you’ve also included in your mark.
The best way to avoid a Section 2(d) Office Action is to perform thorough research before filing your application. If you didn’t feel a trademark attorney worth the cost at the time of filing, you should reconsider if you receive this correspondence from the USPTO. Given the difficulty in overcoming it, an attorney might be your only chance.
Section 2(e) – Descriptiveness
A name that describes your product or service might help consumers identify what you provide, but it could work against your trademark rights. If your mark consists of a merely descriptive term or phrase, the USPTO could refuse your application under Section 2(e). The following are grounds for a descriptiveness Office Action:
- The mark is merely descriptive or deceptively misdescriptive of the product or service
- The mark is primarily geographically descriptive or misdescriptive
- The mark is primarily merely a surname
- Includes a functional term describing the whole
(If you think these terms are confusing, consider that the official wording is much denser and more difficult to understand.)
If you filed a trademark application for Oakland Burger Restaurant, you might receive a Section 2(e) Office Action. The mark is merely descriptive, and it could be argued that it primarily uses a geographic term.
A company can overcome a descriptiveness Office Action in two ways, though the first is much more effective.
You can trademark a descriptive term if you have established “acquired distinctiveness.” The most effective means of establishing acquired distinctiveness is through five years of substantially exclusive use. If Oakland Burger Restaurant serves customers for five years, and no other restaurants use that name, they would have a strong trademark case.
The other means of arguing against a Section 2(e) Office Action is to cite consumer understanding. A term might seem descriptive to someone with no knowledge of a particular industry, but might mean something different to the consumers who shop in that market. This is a much more difficult case to prove.
Of course, being a big brand will in itself help your case. The USPTO originally refused Apple’s trademark application for iPad mini, stating that “mini” was merely descriptive (since Apple already owned the trademark on iPad). A few months later they reversed that ruling.
Notice of allowance
While receiving any of the Section 2 Office Actions can hinder your trademark application, receiving a notice of allowance is cause for celebration. It means that your trademark has passed through the opposition period without issue. You are cleared for registration, though you are not registered quite yet.
Trademarks filed under an “intent to use” basis–i.e., they are not yet being used in commerce–must file a Statement of Use in response to the Notice of Allowance. The deadline for filing the Statement of Use is 6 months from mailing date of the Notice of Allowance. Alternatively, a company can file an Extension Request. Each Extension Request requires a fee, and extends the time period for filing the Statement of Use by 6 more months.
If you do not file a Statement of Use within 6 months of receiving the Notice of Allowance, your application will be deemed “abandoned”. That can add multiple steps to the registration process, and can ultimately result in you losing your trademark rights.
While not necessarily an outright refusal, the USPTO will often issue a disclaimer in response to a trademark application. Disclaimers typically cover portions of the larger mark that the USPTO cannot approve.
Oftentimes a disclaimer will involve a descriptive portion of a mark. If you wanted to trademark a tablet called Green Meadow Tablet, you would have to disclaim the word “tablet” from your trademark registration. It does not add to your distinctiveness, and is merely descriptive.
Receiving a disclaimer requirement does not necessarily hurt your overall chances for approval. Oftentimes merely disclaiming the disputed portion of your mark will resume the application process. In some cases, however, you will want to challenge the USPTO.
The USPTO could identify a portion of a mark as descriptive for reasons you did not intend. The word might also have several meanings and yours may not in fact be descriptive at all. If you feel that the USPTO has erred and that the disputed term does indeed add to your distinctiveness, a challenge makes sense.
Attorneys can serve you well in both the filing and the reception of a disclaimer. When filing, an attorney can advise you on which portions of your mark might require a disclaimer. After you receive a disclaimer requirement from the Trademark Office, retaining an attorney can increase your chances of a successful challenge.
Section 2(a) – Deceptive, disparaging, or scandalous
This is an uncommon trademark Office Action, since companies rarely spend good money to register deceptive marks. By deceptive, the USPTO means that it improperly describes the product or service being offered. You might get a Section 2(a) Office Action if you tried to register the name “BOB’S ORGANIC CEREAL”, and the cereal being sold was not actually made with organic ingredients.
(Though with the assistance of an attorney you wouldn’t have wasted your time applying for that mark in the first place.)
In addition, Section 2(a) covers marks that disparage individuals or groups, or that make use of vulgar language.
If you’re surprised to receive this Office Action, it is possible that the USPTO erred in judgement. But in most cases, this refusal will stick.
Section 2(b) – Government insignias
Your trademark cannot include a government flag, coat of arms, or insignia. This covers not just the U.S. government, but for any state, municipality, or even foreign nation. In many cases, the USPTO has not allowed government entities to use their own city’s insignias in a trademark registration.
This clearly does not bar anyone from using a flag on product packaging or in advertising. How many advertisements to do you see containing the American Flag? Plenty. You just can’t trademark any images containing an accurate representation of the U.S. flag, or any other government flag.
Section 2(c) – Names of individuals
You cannot trademark someone’s name or likeness without his or her consent. You must provide proof of consent from the individual if you wish to proceed with a filing. This applies only to living individuals, though it does cover deceased Presidents while their widows survive.