Trademark Practice in Silicon Valley
NON-FINAL OFFICE ACTIONS AGAINST TRADEMARK APPLICATIONS: WE’RE HERE
You filed a trademark application for your business and received the initial response from the Trademark Office (USPTO), denying the application. This response is called a Non-Final Office Action. The ground for denial is a likelihood of confusion with a preexisting trademark, based on similarity of the mark and similarity of the goods. What to do?
If you haven’t done so already, hire experienced legal counsel. Frequently, experienced counsel can turn things around. She or he can evaluate the best strategy to overcome the rejection, if the option exists. In all likelihood, a response would include argument of facts and case law and trademark regulations to demonstrate that the likelihood of confusion either does not exist or is remote. But act promptly. If you don’t file a response by the three-month deadline, your application will automatically be deemed abandoned.
To be clear, rejections of trademark applications are based on a variety of grounds. In addition to likelihood of confusion, the basis may be an inadequate specimen or an inadequate description of a design mark. This article focuses on a denial based on likelihood of confusion with a prior, existing trademark (the “cited mark”). Such denials are often the most difficult to overcome, because of the priority issues and subjective nature of the evaluation.
While strategies include filing a petition to cancel the cited mark and deleting certain goods or services in the application’s description, typically the response will be submitting arguments and exhibits in response to the Non-Final Office Action. The response is aimed at persuading the trademark examiner that there in fact is no likelihood of confusion, and thus the application should be allowed. We distinguish all the ways the cited mark differs from the client’s mark and how dissimilar the goods or services of the cited mark are to those in the client’s application. We look at channels of trade and targeted customers.
Your best option is to consult an experienced trademark law firm, like us. We have a national trademark practice. Because all submissions are made online, we can effectively represent you in responding to non-final office actions -- no matter where you are and regardless of where we are.
Contact us at payne@bobpayne.com to discuss how we can help.
ABOUT OUR TRADEMARK PRACTICE
Many businesses need or desire to federally register their trademarks for maximum protection nationwide. There are two steps: filing the application to register and then prosecuting the application in overcoming rejections or conditions initially announced by the U.S. Patent and Trademark Office. Additionally, third parties can oppose registrations in an administrative trial proceeding. We handle the process from beginning to end. We also assist clients in their identification of potential trademarks to register, evaluating their prospects for success.