Congratulations! You’ve started your business and things are going well. After discussions with a licensed trademark attorney, you recognize the necessity of obtaining a federally registered trademark to protect your brand name, logo, trade dress, etc. and begin the application process. However, simply filing the application does not guarantee registration. The United States Patent and Trademark Office (USPTO) routinely issues “Office Actions” in response to an applicant’s proposed mark noting some technical/procedural fault or a more substantive one. Depending on the scope of the Office Action’s reason for refusal, you may have the option to simply amend your application rather than argue to overcome a full rejection.
Take for example the good or service to which you designated your design, logo, trade dress, etc. in the application. The USPTO may initially reject your application for a mark due to, what the examining attorney determines to be, an overly broad designation. In response the applicant may simply amend the description of the cited goods or services, clarifying the scope of protection sought. Though minor, this is an issue that could be the line between a valid, registered mark and a failed application. However, this minor issue must be addressed quickly and sufficiently. Address all the issues set out in the Office Action and make sure your response is submitted within the six-month window or else your application will be considered abandoned.
A more substantial issue raised in an initial Office Action would be, for example, a refusal based on a likelihood of confusion between your proposed mark and an already registered mark. An examining attorney may note a likelihood of confusion between your proposed mark and another for a variety of reasons, including the similarity of the marks and the relatedness of the goods. Similarity of the marks is analyzed by comparing overlap in phonetic sound, appearance, meaning (e.g., the same word in multiple languages), and commercial impression (e.g., two logos with similar design characteristics leave consumers with a similar feeling about the source and mark when encountered in the market). Upon a proper balance of all the relevant factors, any one of these can be sufficient to result in refusal on the ground of likelihood of confusion. In response to the Office Action, you may be able to overcome the initial refusal by leveraging other factors, such as: highlighting the distinctions between your goods and services in comparison to the earlier marks; narrowing the field of use; or, receiving an agreement from the registered owner of the earlier mark.
If those options are insufficient and the USPTO issues a Final Office Action rejecting your mark, you may either take further action to appeal the decision or may need to reconsider the mark’s design itself. Your actions could include either or both a Request for Consideration by the examining attorney, or an appeal to the Trademark Trial and Appeal Board (TTAB). A TTAB appeal, much like the other forms of response stated herein, does not necessarily mean that the USPTO will reverse its earlier decisions. Know that these appeals can take time and may be costly. Discuss the matter with a licensed trademark attorney to determine their opinion on the issue. A costly appeal may not be worth it for a new brand or company if it would be less time, labor, and expense to design a new mark, begin anew, and secure successful registration.