In this Trademark Law Radio Interview, Attorney Brian A. Hall discusses the trademark application process related to trademark registration, examination of the trademark application, the different types of office actions issued by the USPTO and the best way to respond. Read the full show below:
Announcer: Welcome to Trademark Law Radio, the definitive portal for all trademark matters on the web. Now here is your host, Damien Allen.
Damien Allen: Good morning, and welcome to Trademark Law Radio. My name is Damien Allen, and today joining me on the phone is Brian A. Hall, attorney with Traverse Legal, PLC. Good morning, and welcome to the program, Brian.
Brian A. Hall: Hey, thanks a lot. How are you doing, Damien?
Brian A. Hall: Doing great.
Damien Allen: Well, today we’re talking about the USPTO and some office actions they might issue out to trademark applicants. What should a trademark applicant do when receiving a USPTO office action? The first question we need to ask, what is a USPTO office action, Brian?
Brian A. Hall: Well, a USPTO, and when we refer to that, we’re referring to the United States Patent and Trademark Office. When they issue an office action, essentially, it is something that’s part of a trademark application process. And it’s a letter detailing substantive reasons for refusal of the trademark application. It sometimes may include technical or procedural deficiencies in addition to any substantive reason for the refusal. Oftentimes, if it’s something minor, so, more along the lines of a technical or procedural deficiency, the examining attorney at the USPTO may simply contact the applicant or the trademark applicant’s attorney, via telephone or email, and seek to resolve the outstanding office action. But if it’s more of a substantive reason for the refusal of the trademark application, more often than not, a actual letter detailing the reasons for that refusal will be sent to the trademark applicant or, if the trademark applicant is represented by an attorney in a law firm, the trademark applicant’s attorney.
Damien Allen: When would the trademark applicant receive the USPTO office action?
Brian A. Hall: Well, a trademark application process really goes through several steps. The first is, obviously, a trademark application is drafted and filed, and again, this is something that can be done by an individual but, more often than not, is done by a trademark attorney who practices in the trademark area. Once the application is filed, when I say filed, it’s filed with the USPTO, and once it’s filed, it is reviewed, initially, to ensure that it includes all the information that is required as part of any trademark application. And if it does pass that initial review, then it’s assigned to an examining attorney who works for the USPTO, who then does a more substantive review of the actual application. And as part of that review, the examining attorney will look to see whether or not there are any issues that require a USPTO office action to be issued. And really what it comes down to is an examining attorney is acting essentially as judge and jury for that particular application to determine whether or not it’s something that would eventually procure into a full-fledged trademark registration that the applicant can then use as a basis for their trademark rights moving forward.
Damien Allen: What kind of issues may be raised in a USPTO office action?
Brian A. Hall: Well, like I said before, there are really two areas. It’s either a substantive issue or a technical or procedural issue. The two most important issues that I think trademark applicants need to be aware of are more substantive based. The first would be, likelihood of confusion, and what that means is when the examining attorney gets the trademark application, they will do a review of the USPTO database and see whether or not there are any marks, either pending or registered, that create a likelihood of consumer confusion with the applied for mark. And if so, the examining attorney will note what those marks are, including the serial number if it’s a pending application, or a registration number if it’s an actual trademark registration, and allow the trademark applicant or trademark applicant’s attorney to make an argument as to why there is not any likelihood of confusion. And as part of that, the office action will list what are the factors that the examining attorney looked at, most important, being the similarity of the goods, similarity of the mark themselves, etc. And the trademark applicant’s attorney will have an opportunity to respond to the office action and set forth arguments with the ultimate goal of overcoming the examining attorney’s refusal based upon the likelihood of confusion. So, that’s really the first issue that would be one of the more substantive issues. The second one would be a refusal in an office action based upon the mark not being distinctive. And recall, Damien, there’s that continuum of distinctiveness, and in order to qualify for trademark protection, in a trademark registration for that matter, the mark must be distinctive, meaning it cannot be generic or merely descriptive. It has to have acquired distinctiveness if it’s a descriptive mark or be inherently distinctive, which is a suggestive mark, an arbitrary mark, a fanciful mark, etc. So, sometimes an examining attorney will note in a USPTO office action that the mark does not appear to be distinctive as it relates to the goods or services, and if that’s the case, again, the trademark applicant’s attorney, or the trademark applicant itself if unrepresented, can set forth arguments to the examining attorney in a response to the office action with the hope of overcoming that initial refusal and allowing the mark to proceed through the registration process.
Damien Allen: Are there any deadlines that a trademark applicant should be aware of?
Brian A. Hall: Yes, that’s a great question, Damien. Most definitely. If an examining attorney does send an office action, a response to that office action must be received within six months of the mailing date of the office action. So, for example, if the USPTO sends out an office action on January 1, six months from January 1 will be the due date for a response to that office action. If someone fails to respond to a USPTO office action, then the mark can be abandoned, which essentially means that the application is no longer active and that it will not proceed through the registration process. And while there’s a grace period of two months to reinstitute an application that was abandoned, it’s something that you definitely would want to avoid, and there’s really no reason why it shouldn’t be avoided because six months to respond to an office action, even if it’s a substantive issue, should be plenty of time.
Damien Allen: Is there any way to challenge an examining attorney’s decision in a USPTO office action?
Brian A. Hall: Most definitely. If ultimately an office action is issued, arguments are made and responded to, and the USPTO still deems the mark or the application not worthy for registration, there is a process known as an appeal that can be filed, and what happens is a trademark attorney can file an appeal to the Trademark Trial and Appeal Board, also known as the TTAB. And what that is, is essentially a panel will review what they examining attorney set forth in the USPTO office action, review the arguments made by the trademark applicant’s attorney in the hopes of getting the mark to proceed through the registration process, and ultimately make a decision as to whether or not the office action contains merit and therefore should refuse the registration, or whether the examining attorney was incorrect in its statements and in its refusal as set forth in the office action and allow the mark to proceed. Ultimately, at the end of the day, the Trademark Trial and Appeal Board decides not to allow the mark to proceed, a civil action can be filed in a district court, more often than not, it’s the Federal Circuit, but what happens then is you’re challenging, essentially, not only the USPTO office action, but the ultimate refusal by the United States Patent and Trademark Office to have the mark registered with the USPTO.
Damien Allen: Well, thank you for joining us today, Brian, and explaining what should happen when you receive a USPTO office action.
Brian A. Hall: Thank you very much, Damien.
Damien Allen: You’ve been listening to Trademark Law Radio. My name is Damien Allen. Everybody have a good afternoon.
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