Office Action Responses

Effective Office Action Responses can be some of the most difficult things to prepare and file for in all the Trademarks System; and if you’ve received an Office Action from the Trademark Office, you’ll recognize it because it’s going to give you a rejection of your mark based on a substantive reason or a procedural reason. Substantively, the examiner is probably looking to make sure that your mark is going to be uniquely associated with your goods and services. 

So, they tend to look at two things: (1) The Similarities to other marks to make sure that consumers will not be confused that your product is being sold by someone else. 

The second thing that they look for is (2) Distinctiveness. One of the examples I use frequently is you can’t open a hamburger stand called “Hamburgers” and expect that the Trademark Office is gonna let you use that name exclusively. Yeah, you can probably use it, but so can everybody else. Why? It’s just not distinctive. It’s what we call generic.  You also might get a rejection based on submitting an (2) Improper sample. One of the most common that I see is when an author tries to register a Trademark for their book title. There’s a prohibition on that. However, you can get a trademark registration on a book series. So, you got to submit the Proper Samples in that situation and all others to make sure that your mark goes to registration.

Another reason you might get a rejection is based on having an (3) Improper Description. Now, the Improper Description could be of the samples and the Improper Description could be of the goods and services that you’re trying to sell using that name, and examiner’s will make you bring your description of goods and services in alignment with your Actual Use or Intended Use in some cases. However, that’s dangerous. And so, this is the totality of the majority, vast majority, of the bases of rejection.

Now, especially when we’re starting to look at likelihood of confusion and something called Acquired Distinctiveness, the responses to the Office Actions can become pretty expensive. In fact, we might have to obtain and submit affidavits from industry experts or obtain market surveys that the result of which would indicate that your mark has Acquired Distinctiveness. For example in Dallas, Texas, there’s a place where the Texas Rangers play baseball called The Ballpark in Arlington. Well, The Ballpark in Arlington before it became famous, was just, you know, kind of a frankly descriptive name that’s not distinctive. However, because of lots of advertising and promotion, that name, “The Ballpark in Arlington” acquired distinctiveness. And the people, who I know, who obtained the registration for that Trademark were able to show Acquired Distinctiveness through a market survey. 

So, that’s just one example. If you have questions regarding your own Office Action Rejection and how to prepare a response, in particular how we can help you prepare a response to that Office Action, feel free to give us a call, and I look forward to seeing you in the next video.


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