Simplifying Legal Stuff

WITH ATTORNEY FAITH MITTON

Article: When NOT To Fight An Office Action - Angel's Story

Disclaimer: This content is for general legal education purposes only and shouldn’t not be relied upon as legal advice specific to your situation. If you need legal advice, consult a licensed attorney.

Imagine the excitement of starting your own business, crafting a unique brand that embodies your vision and passion. Maybe you’ve carefully chosen a name, selected a slogan, and designed a logo to promote your business. 

And because you’re a savvy and knowledgeable entrepreneur, you know how important it is to make sure no one else can use a similar brand.  You want the legal protection that comes from having a registered trademark for the name, tagline, or logo you’ve created.

So you submit an application to register a trademark for your brand and happily await approval. Then, suddenly, you receive an “office action” from the United States Patent and Trademark Office (USPTO)—a notice that your application has been (temporarily) rejected.

It’s a moment that can strike fear into the heart of any entrepreneur. If you don’t convince the USPTO to withdraw the office action, the rejection will become permanent and your brand will be vulnerable to copycat competitors who confuse your clients and customers. 

For Angel Reese, well-known in sports circles as the  “Bayou Barbie,” this scenario became all too real. Her application for a trademark hit a roadblock when the USPTO raised concerns about potential confusion with the iconic BARBIE trademark owned by Mattel.

What followed was a lesson in the complexities of trademark law and a decision that ultimately led her to abandon her trademark application. Let’s dive into Angel’s journey and the lessons we can learn about when to give up after getting an office action.

From Hooping to Hemming: A Baller Clothing Brand

Angel Reese isn’t the typical entrepreneur, but small business owners still stand to learn a lot from her attempt to get a trademark registration for her brand. 

For those who are unfamiliar with her, she’s a professional basketball player for the Chicago Sky of the Women’s National Basketball Association. She played college basketball at Louisiana State University, where she got the nickname BAYOU BARBIE.

She explained the origin of the name to Sports Illustrated in 2023, saying “I’m in Baton Rouge, which is the bayou, and then the Barbie part is my nails, lashes, hair [which are] always done on the court, so yeah, it went together.” 

Like most celebrities, Angel wanted a trademark registration for her alter ego/stage name BAYOU BARBIE so that she could control how her brand was monetized. Getting a trademark would mean she could block everyone else from selling BAYOU BARBIE merch.

And she was specifically focused on clothing merch, so she filed a trademark application for BAYOU BARIE covering items like shirts, sweatshirts, jackets, socks, underwear, tank tops, shorts, pants, jeans, belts, hats, shoes, bathing suits, and cover ups. 

She thought her application had a good shot of being approved – otherwise, she and her lawyer wouldn’t have filed it. Unfortunately, the USPTO took a completely different perspective.

Why Angel's Trademark Was Rejected By The USPTO

Trademarks aren’t just handed out like candy; they go through a really, really extensive review process. This process involves the USPTO carefully examining a trademark application to decide whether it meets all the legal requirements for approval.

In Angel’s case, they didn’t think BAYOU BARBIE qualified because it conflicted with the BARBIE trademarks owned by Mattel. Hold up. Pause. Isn’t BARBIE all about dolls and children’s toys? What does that have to do with Angel Reese’s clothing and other merchandise?

Well, in the world of trademarks, if two trademarks look alike and are used for similar products or services, there’s likely to be a conflict. And in this case, BAYOU BARBIE sounds a lot like BARBIE. There’s literally one word that’s identical between the two trademarks.

But what does clothing have to do with children’s toys? Actually, quite a bit. See, Barbie isn’t just a toy; it’s a famous trademark. I mean, like, really famous. It’s a household name that practically everybody in the U.S. knows about.

Famous trademarks like Barbie have broader protection than regular trademarks that you or I might have for our small businesses. Because they’re so well known, they’re more vulnerable to counterfeits that will hurt their reputation & confuse their customers. 

So that means if someone tries to register a trademark that conflicts with a famous trademark, their application may not be successful even if they sell products that the famous brand doesn’t sell. An indirect conflict can still kill the trademark application.

That’s why it wouldn’t matter if Angel was targeting a different audience with her clothing line compared to Mattel’s typical customer base. People might think that Angel was affiliated with Mattel somehow, creating a likelihood of confusion between the brands. 

In this case, Mattel actually did have a bunch of BARBIE trademark registrations for various clothing-related products, which meant there was a direct conflict between Angel’s BAYOU BARBIE trademark and the original BARBIE trademark. 

The USPTO can’t allow these types of conflicts to exist on their database, so they denied her application. Instead of fighting the USPTO’s decision, Angel and her attorney decided to bow out gracefully and abandon her trademark application.

Not Fighting The Office Action Was Smart...In This Case

Trademark law exists to protect consumers from confusion about the source of goods or services. When you see a trademark like “Nike” or “Coca-Cola,” you know exactly what you’re getting. The same goes for “Barbie.” 

When you hear BARBIE, you think of a classic doll – as well as toys, furniture, and clothes related to that doll.  Based on the doll’s appearance, BARBIE has also become synonymous in pop culture with a perfectly groomed, stereotypically beautiful woman.

That’s why the USPTO was skeptical about Angel’s BAYOU BARBIE trademark. Even though it wasn’t exactly the same as BARBIE, it’s similar enough that consumers might get confused. And because BARBIE is such a famous trademark, it has special legal protection.

And let’s go back for a second to Angel’s explanation for how she got her nickname: the BARBIE part referred to her physical appearance while she was playing basketball – with her hair, nails, and lashes always being done. 

She was intentionally building her brand using the well-known connotation of BARBIE. Basically, she was trying to draw a connection between her and the actual BARBIE doll, as if she was a human version of the doll who played basketball in the Bayou.

That’s a huge no-no! This is straight-up trademark infringement. Angel wanted to capitalize on the recognition and goodwill that Mattel has spent decades and billions of dollars building for its BARBIE brand, and the USPTO was right to shut that down.

And let this be a warning to all you entrepreneurs out there who are building your businesses and trying to figure out how to name your stuff. Please, do not incorporate large brands into your brand names, taglines, logos, or any other part of your brand identity. 

When you do that, you’re asking for trouble. Not only can the USPTO deny your trademark application because of another company’s registration, but those big companies can take action against you even before the USPTO gets involved.

Big companies with deep pockets are always keeping an eye on their trademarks, looking for potential infringement. As soon as you file your trademark application, they’ll know about it and they have the money to do something about it.

They might send you a cease and desist letter, make legal filings to block your trademark applications from being approved, get your brand taken down from different online platforms, or sue you for trademark infringement. It’s just not worth it.

So, learn from Angel’s experience. Be unique. Be creative. Come up with something original that’s true to you and your vision. Don’t try to put your own spin on somebody else’s brand—it’s a recipe for disaster.

But When Should Someone Give Up After An Office Action?

Angel’s situation is probably the only one where it makes sense not to respond to an office action. By her situation, I mean knowingly and intentionally committing trademark infringement by incorporating a famous trademark into yours.

If you’re not doing that, then responding to the office action is usually an excellent idea. Think of it this way: if you respond to the office action, there’s a chance the USPTO will agree with you, withdraw the office action, and approve your trademark application.

If you don’t respond to the office action, you guarantee that the USPTO will not change its mind and that your trademark application will not be aproved. It’s the possibility of victory versus the assurance of defeat. I’ll take that possibility any day!

But here are some common reasons why people tend to abandon their trademarks after getting an office action, along with some insight about why these reasons just don’t hold water:

  • “I don’t fully get the office action and what it means for my trademark. It’s all a bit confusing, and I’m not sure what to do. Things are getting way too complicated for my tastes.”
      • Insight: Office actions are written in confusing legalese – there’s no doubt about that. That’s because they’re written by lawyers. The best person to interpret what’s being said and help you figure out your next steps is a trademark lawyer. When you understand what’s going on, it can help calm your worries and lead to a smarter choice.

  • “The office action is pretty convincing. I don’t see any way forward for my trademark application, and things look pretty hopeless. Responding seems like a huge waste of time.”
      • Insight: USPTO examining attorneys are trained to write in a very matter-of-fact tone that seems to leave no room for challenges. That doesn’t mean that they’re right 100% of the time, and they quite often do change their minds when presented with a winning response. A skilled trademark attorney can help you to create this kind of response.

  • “I can’t swing the legal fees to respond to the office action. It’s pricey to hire a trademark attorney, and I’m not sure I can afford it right now.”
      • Insight: While legal fees can definitely be a concern, bailing on the trademark application early can mean losing out on the protections that prompted you to file the app in the first place.  Many attorneys offer payment plans or different fee options to make legal help more affordable for entrepreneurs with tight budgets.

  • “I’m scared of dealing with legal problems or a lawsuit if I keep going with my trademark application. The office action is saying there might be confusion with another trademark, and I don’t want to risk any legal issues.”
      • Insight: A likelihood of confusion refusal does not always mean that you’re infringing on another brand. That was the case with Angel only because she was building her brand on someone else’s. But even trademarks that look/sound similar and are used to promote similar businesses may still be distinguished in other ways that eliminates a likelihood of confusion.

         

  • “The USPTO says my trademark is too descriptive or doesn’t actually function as a trademark, so it can’t be registered. It’s frustrating because I thought it was unique enough to stand out.”
      • Insight: Descriptiveness and failure-to-function refusals are two sides of the same coin – the USPTO thinks your trademark isn’t unique. A good response to these office actions needs to give the USPTO the appropriate context to understand how the trademarks actually do stand out from the crowd. The examining attorneys can’t seek out this info on their own.

Wrapping It Up

Bottom line: there’s rarely ever a good reason to abandon your trademark application after you get an office action.  The office action doesn’t mean the USPTO’s decision is final.

With the right legal guidance, you may be able to strengthen your application and increase your chances of approval. It’s important not to underestimate the possibilities for resolving the USPTO’s concerns.

Abandoning your trademark application could mean walking away from the opportunity to protect your brand in the marketplace, which could have negative long-term consequences for your business.

So while it may seem like a waste of time initially, responding to the office action can ultimately save time and resources by avoiding potential legal disputes or rebranding efforts in the future.

Your trademark represents your brand’s identity and reputation. Getting a trademark registration for your brand is important because it acts as both a sword and shield in the crazy world of intellectual property disputes.

As a sword, it gives you exclusive rights to use your trademark. With a federal trademark registration, these rights extend nationwide. So you can shut down conflicting brands anywhere in the US. 

The trademark registration can shield you in infringement disputes, too. This means that if someone accuses you of using a trademark that is too similar to theirs, you can point to your registration as evidence that you own and have the right to use your trademark. 

Trademark registrations are also required to sell your products in certain e-commerce platforms or in-person retail locations, to get copycats/infringers removed from social media, and to do collaborations with other business (especially larger companies).

Ultimately, while responding to an office action may seem daunting, it’s a common part of the trademark application process and often a necessary step in protecting your trademark to ensure the future success of your business. 

If you’re feeling overwhelmed or uncertain about your office action, consulting with a trademark attorney can provide clarity and peace of mind. They can help you develop a strategic response that maximizes your chances of success.

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About The Content Creator

Faith Mitton, Esq.

Faith is a lawyer on a mission to simplify legal stuff for entrepreneurs so that they don’t have to stress about how to protect themselves & their businesses. She’s the founder and managing attorney of Mitton Law Firm, PLLC – a boutique law practice based in NYC that helps small businesses nationwide to protect their intellectual property with trademarks and copyrights. When she’s not practicing law, you can usually catch her jamming to classic soul music, taking long walks, or rewatching The Office for the millionth time.

About The Content Creator

Faith Mitton, Esq.

Faith is a lawyer on a mission to simplify legal stuff for entrepreneurs so that they don’t have to stress about how to protect themselves & their businesses. She’s the founder and managing attorney of Mitton Law Firm, PLLC – a boutique law practice based in NYC that helps small businesses nationwide to protect their intellectual property with trademarks and copyrights. When she’s not practicing law, you can usually catch her jamming to classic soul music, taking long walks, or rewatching The Office for the millionth time.

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