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.
So, you’ve started the process of trademarking your brand, only to receive the unexpected news – your trademark application got rejected. Don’t hit the panic button just yet!
In this rollercoaster trademark ride, there are two major things that can throw you for a loop: office actions and oppositions. Either can be the end of your trademark journey, unless you carefully and strategically navigate your way around it.
This blog post will break down the most common scenarios where office actions and oppositions crop up as well as common ways to get around them.
Buckle up, and let’s dive in! We’ve got A LOT of ground to cover.
First Up, Let's Talk About Office Actions
Okay, so what IS an office action, and why should you care about it?
Let’s back up for a sec and put some context on this thing.
Trademark applications are not the type of legal filing that get automatically approved by a system. (Side note: LLC filings tend to be approved this way, so if you filed your LLC and got an instant approval – don’t expect the same thing to happen with your trademark).
The whole point of registering a trademark with the government is to let everybody know that you own the name, tagline, or logo that’s listed in your registration. These names, taglines, and logos represent your brand and are the core things that can be protected with a trademark. But some non-traditional types of branding that can be trademarked include colors, scents, domain names, and even building designs.
Trademarks are all about making sure that people can easily recognize your brand and distinguish it from anyone who’s doing something similar to you. The beautiful thing about registered trademarks is that they can give you exclusive rights over your brand, meaning that you’ll be able to stop competitors from using branding that’s similar to yours!
But not everything can (or even should) be approved as a registered trademark.
So because of this, the approval process of trademark applications is SUPER INTENSE. There are thousands of trademark applications filed with the US Patent and Trademark Office (or USPTO) everyday, and each application has to be reviewed by an individual person! (Not the same person, mind you – the UPSTO has tons of examining attorneys on staff whose only job is to review and decide on trademark applications).
But each trademark application has to tick off all the boxes on a legal checklist in order to be approved. So when an examining attorney reviews an application and sees that it misses one of the boxes, they have to notify the applicant in writing that something is wrong with their application.
And THAT’s what an office action is: a written notification from the USPTO that the trademark application you filed has been rejected because it didn’t meet one or more of the legal standards required for approval.
But there’s good news! You ALWAYS have a chance (and sometimes more than one chance) to address and correct the issues that the USPTO examining attorney highlights in an office action. So although an office action is a rejection, it doesn’t mean your trademark can’t ultimately be approved.
Different Types of Office Actions (And How To Beat Them)
The issues that an examining attorney can raise in an office action typically fall into two main categories: procedural issues and substantive issues. If an application has both procedural and substantive issues, they’ll usually be combined in one office action.
These issues come up when a trademark applicant hasn’t dotted their I’s or crossed their T’s. In other words, these are minor, technical issues that are usually pretty quick and easy to fix. In the office action, the USPTO examining attorney will tell you exactly what you need to do to correct the problem.
It’s a little easier to understand procedural issues with an example in mind, so let’s use this one: Tasha is a grade school math tutor who sells different educational courses and workbooks and who runs a mobile app where students can practice math exercises. She applies to register a trademark for her brand: TASHA’S TUTORING.
Here are some examples of procedural issues that Tasha could face:
- Class Problems: There are 45 classes that you can apply to register a trademark in. These classes are broad categories of products and services, but they’re not based on industries. Instead, they focus on the activity you do within your industry. So, you have to correctly match the class to your products and services – otherwise, you’ll get an office action. In our example with Tasha, the educational courses would be in Class 41, the printed workbooks would be in Class 16, and the mobile app would be in Class 9. If she applied for the trademark only in Class 41, she’d get an office action telling her to pay for the additional 2 classes.
- Misidentification of Products And Services: Although you have to apply to register a trademark in a class, the classes are HUGE since there are only 45 of them and there are a bajillion different products and services that are squeezed into these 45 classes. So, a successful trademark application has to list the specific products and services that are connected to the trademark. This is known as an “identification of goods and services” or a “description.” But the description has to be in the right technical legal format and must match the right class. In our example with Tasha, she would get an office action for her description if it looked like this: “I am a tutor who teaches kids about math through online courses.” That’s because it’s in the wrong format. Instead, it should look something like this: “Educational services, namely, providing online courses of instruction at the primary level in the field of mathematics.” If there’s a problem with your description, the examining attorney will provide an alternative description that meets the legal requirements in the office action.
- Bad Specimen: Having a “specimen” is one of the most important requirements for a trademark application to be approved. A specimen is another way of saying “proof of use.” You must be using a trademark publicly to market/sell products or services in the United States in order to get trademark rights, so the UPSTO will want to see proof of this use in your trademark application. Website screenshots are most commonly used as proof of use, atlhough there are other things that can be used as specimens too (like invoices, hang tags on clothing, brochures, photos of storefront signage, point-of-sale displays, etc). But trademark applicants tend to trip up when they use a specimen that doesn’t show the trademark as filed or if they use the wrong type of specimen based on the trademark class. The office action will explain why the specimen doesn’t cut it.
- Filing Basis: Remember when I said that you must be using a trademark publicly in order to get trademark rights up there in the last paragraph? Well, when you file, you have to tell the USPTO whether you’re using it publicly or not. This is known as the filing basis. For trademark applicants in the United States, there are two filing bases: in-use (for people who are currently using their trademark publicly) or intent-to-use (for people who are not using the trademark publicly yet). In-use applications are also known as 1(a) applications, while intent-to-use applications are known as 1(b) applications. In our example with Tasha, let’s say that she hasn’t launched her tutoring business yet, but she has a website up that says “TASHA’S TUTORING COMING SOON.” If she submits her application using 1(a) as her filing basis and a screenshot of her website as a specimen, she’ll get an office action telling her that her specimen won’t work since “coming soon” doesn’t count as public use and that she should change her filing basis to 1(b). Any office action you receive that raises filing basis as an issue should explain why the filing basis you chose is incorrect and what you should do instead.
- Disclaimer: Another thing I said earlier is that trademarks are all about distinguishing your brand from anyone doing something similar to you. But if your trademark includes language that lots of other people in your industry use to describe their work, you’ll need to disclaim that language. In other words, you’ll need to admit that you don’t have the exclusive rights to use that language and that you can’t prevent someone else from using that language to sell similar products and services. This is to make sure that other people can still use those common, everyday words to sell their products and services – because it wouldn’t be fair for one person or company to own those words. In our example with Tasha, the word “tutoring” is a common word used by tutors to describe their services. So Tasha would likely get an office action explaining that she needs to add a disclaimer for the word “tutoring” in her trademark. If you include commonly used language in your trademark, the examining attorney may ask you to add a disclaimer for it in an office action.
Although procedural issues can look simple, sometimes following the USPTO instructions can land you in hot water. Remember that the USPTO examining attorney is NOT your attorney, and they are not there to advise you about how to best protect your brand. As a matter of fact, the examining attorney will actually tell you to hire your own lawyer in the office action if you don’t have one already!
The examiners work for the USPTO, so they are not really in your corner and it’s not their job to look out for your interests. That means you have to take their recommendations (even on “simple” procedural issues) with a grain of salt, because the wrong move can have devastating effects on your brand long-term.
A good example of this has to do with disclaimers, since disclaimers actually weaken your trademark rights! By admitting that part of your trademark is descriptive, you open the door to having lots of other competitors using trademarks that are similar to yours, which could confuse your clients and customers.
Don’t get me wrong – in some cases, a disclaimer is completely appropriate. This would be true in our example of TASHA’S TUTORING. But in other cases, a disclaimer isn’t appropriate because the commonly used word is used in a unique or bizarre way that changes its meaning. For example, think of the trademark URBAN SAFARI. Both urban and safari are everyday words that have meanings we all easily understand. But combining them creates a new concept whose meaning has us scratching our heads. Is it a tour guide service? A restaurant? A home decor company? It’s not entirely clear. This would be a case where it might be a good idea to write a legal brief challenging the examining attorney’s conclusion if they tried to make the trademark applicant disclaim “urban” or “safari.”
Speaking of legal briefs, that’s a perfect segue into our next topics: substantive issues in office actions.
These issues are not minor or technical in the slightest – and there’s no quick fix for them. Instead, when an examining attorney raises a substantive issue in an office action, you typically have to reply with arguments to convince the examining attorney to change their mind and withdraw their rejection.
But you can’t make these arguments by phone or email. Instead, you have to submit them in professionally written legal briefs that follow a specific format. As with any persuasive legal brief, stating your opinion isn’t enough. To get the examining attorney on your side, you’ll need to follow the tried and true L+F = W formula.
The LAW part of the formula means that you need to reference court decisions in your arguments that support your position. You’re probably familiar with the concept of “precedence” in the law – basically, it just means that decisions made in previous cases can influence or guide the outcome of similar cases in the future. The USPTO examining attorneys as legal professionals are obligated to follow precedent.
But it’s not enough to know which cases to reference.
This is where the FACTS part of the formula comes in. Here, you’ll need to explain how the legal decisions you’re relying on apply to your specific situation. In order to do this, you’ll need to gather and present evidence about your trademark (and about your competitor’s trademark, if relevant). Then, you’ll need to discuss how the general legal principles from the cases you’ve cited should be used to interpret the evidence you’ve presented in order to persuade the examining attorney to see things your way.
This will make more sense when we look at the most common substantive issues addressed in office actions:
- Merely Descriptive: Descriptive trademarks are weak trademarks – meaning that they can only get limited protection. These types of trademarks tell people about a quality, feature, use, or function of your products and services in a way that doesn’t require any imagination or thought. For example, calling a coffee shop “Fresh Brew” is pretty descriptive because it directly conveys information about the type of product being offered.
Descriptive trademarks get hit with office actions because the USPTO is legally restricted from approving them right out the gate. That’s because the USPTO has to avoid granting exclusive rights to terms that others might legitimately need to use to describe their products or services.
But entrepreneurs choose descriptive trademarks all the time because they’re easy to come up with. Honestly, the first thing that pops into your mind when you’re brainstorming a name or tagline will usually be something that’s descriptive. So before you fight a descriptiveness refusal, you have to figure out how your time and money will be best spent: by responding to the office action or by rebranding so you can choose a more unique and creative trademark.
If you choose to fight it, there are a bunch of strategies you can use. But here’s how the L +F = W formula might work in one scenario: find cases where the courts said that the trademark suggested the products and services being sold instead of describing them (LAW), and then discuss how your trademark does the same by making people think about how the trademark is linked to what you sell rather than spoonfeeding them the connection (FACTS). I
- Likelihood of Confusion: Trademarks are all about making sure that people can easily recognize your business and distinguish it from other similar businesses. So the USPTO won’t approve a new trademark application if it is confusingly similar to another pending or approved application in their database.
The reason for this is to prevent situations where people could mistake one brand for another, leading to potential harm for both businesses involved as well as the person who gets confused. The USPTO can’t grant exclusive rights to one business for a trademark and then whip around to approve a very similar trademark for a competitor. It would create absolute chaos and defeat the purpose of having a trademark registration in the first place.
But trademark conflicts are super subjective, and reasonable people can disagree about whether a conflict even exists. There are lots of factors that have to be considered when deciding if there’s a likelihood of confusion, but the two most important are how similar the conflicting trademarks are (in terms of how they look and sound) and whether the products and services associated with each trademark are related in a way that would make people think that they come from the same company.
If the trademarks look and sound similar and are used to promote products or services that most people would consider to be related, there’s a good chance that the likelihood of confusion refusal will be hard to beat. That doesn’t mean impossible to beat, though!
There are many ways around a likelihood of confusion office action, but here’s how it might work in one scenario. As always, we rely on our L + F = W formula: you could find cases that say that confusion isn’t likely for companies have similar trademarks if their customer bases are completely different (LAW) and then discuss the evidence that shows that you have a totally different target audience than the company whose trademark was cited against yours and that you each reach your clients in ways that don’t overlap with each other (FACTS).
- Failure to Function: Like I said before, not everything can (or even should) be trademarked. In order for something to be considered as a trademark from a legal perspective, it has to help people identify a specific person or company as the source of certain products or services.
But there are some situations where something that’s been chosen as a trademark doesn’t operate in this way. One situation is when someone attempts to trademark a phrase that’s commonly used by people everywhere (such as “Hello, How Are You?”) or that’s simply informational (such as “All-Natural Ingredients”). We all use this kind of language everyday, so it would be difficult for anyone to realize that it’s meant to identify a specific brand owner. Therefore, it fails to function as a trademark.
Another situation relates to when a trademark is used in a way that most people wouldn’t recognize as identifying a particular business. For example, when we’re trying to find out which company made a t-shirt, we tend to look at the tag inside the shirt. That’s because the front of a t-shirt is usually reserved for decorative items and some type of message. And even if a company has a t-shirt line, the front of the shirts may all be different. So you can’t reliably look to the front of the t-shirt to figure out the identity of the brand. So anything that’s on the front of a t-shirt would likely fail to function as a trademark. The one exception to this would be if the words or design were on the breast pocket of the shirt, similar to the Polo Ralph Lauren logo, because over time we’ve all come to associate that with the identity of the company.
One more situation that’s relevant here would be when the trademark is considered to be generic. Generic trademarks are a step below descriptive trademarks, which I talked about earlier in this blog post. While descriptive trademarks tend to describe something about the products or services (e.g., if the trademark is RED AND DELICIOUS for apples), generic trademarks describe the products or services themselves (e.g., if the trademark is APPLES for apples). To preserve free speech and make sure no one owns a monopoly on words we all need to use to describe everyday things, generic names and phrases fail to function as trademarks.
In all of the situations I described above, the thing chosen as a trademark didn’t actually operate as one. So how might you beat back a failure to function office action and push your way through to approval? As with the other types of substantive issues, there are lots of strategies that can be used – but even more so here because there are so many different types of failure to function refusals.
But I’ll never leave you without an example, using our handy-dandy L + F = W formula. Let’s say that you applied to register a trademark for your domain name, but it was flagged as generic in an office action. You could find cases where the court said that domain names that might be considered generic aren’t actually generic if enough people think of them as being a brand name rather than just a domain name (LAW) and then discuss the evidence you’ve gathered which proves that you’ve built a strong enough brand over time that people associate your domain name with your specific business, rather than any other business that can do what you do (FACTS).
- Primarily Merely A Surname: I’ve said this in different ways throughout this blog post, but it’s worth repeating here: owning a registered trademark can give you the ability to stop someone who sells similar products or services from using a trademark similar to yours. It’s a legal superpower that allows you to check line-steppers with the quickness.
But there are limits on that. An important one is when the thing you’ve chosen to trademark includes a well-known surname (or last name).
The primary function of trademarks is to help people distinguish between different sources of products or services. If common surnames were freely allowed as trademarks, people might be easily confused about the origin of products or services, leading to a breakdown in the trademark system’s ability to provide clear and reliable information.
And from a purely practical perspective, people need to be able to use their legal last names, even if they’re competitors in your industry. It would simply be unfair to restrict anyone from using their own name just because someone else was lucky enough to register a trademark for it. The trademark system has to balance the rights of brand owners to own names for marketing purposes with the rights that we all have to identify ourselves and be known by our legal names. So if your trademark includes a common last name and is used in a way that consumers would perceive as merely identifying a person, the USPTO may issue a surname refusal in an office action.
But you’ve seen trademarks that include common last names before (the biggest example being McDonald’s!), so you must be thinking to yourself that there has to be a way around these office actions.
And you would be right! Using our favorite L + F = W formula, here’s one way that you might convince an examining attorney to change their mind: you could find cases that say that a name is not primarily, merely a surname if it identifies a historical place or person (LAW) and then discuss the evidence that shows that the surname in your trademark references a cultural icon rather than any run-of-the-mill person with that surname (FACTS).
And there’s no better feeling than when you get that sweet, sweet email from the USPTO notifying you that the office action has been withdrawn!
Now For The BIG KAHUNA...Oppositions
If you successfully defeat an office action, or if you don’t get any at all, you might be tempted to pop the champagne and celebrate your victory!
But there’s one more phase in the trademark approval process that could ultimately throw a wrench in your plans and lead to a rejection – the dreaded opposition.
Until this point, any pushback to your trademark would have been directly from the USPTO. But when the examining attorney finishes their review of your application, they open it up for a short 30-day window to allow anyone to give their two cents if they believe that approving your trademark application would conflict with their rights. This 30-day review period is known as publication, and if someone has a problem with your application, the proper response is to make a legal filing known as an opposition.
Oppositions are both similar to and different from office actions. Like office actions, your application can’t be approved until the opposition is resolved – so it is a type of “rejection” that you may be able to overcome with a thoughtful legal strategy. But unlike office actions, oppositions are initiated by private parties instead of by a USPTO examining attorney.
Filing an opposition is basically equivalent to starting a lawsuit. But it isn’t like any legal dispute you’ve seen before. This showdown takes place in a special court called the Trademark Trial & Appeal Board (or TTAB), which is a panel of 3 trademark experts whose sole purpose is to hear and decide on trademark oppositions.
The TTAB has its own rules that are different from ordinary courts, and it’s rare for people to physically appear before the TTAB. Most of the action happens with electronic filings back and forth from the opposer, the trademark applicant, and the TTAB. The TTAB functions this way in order to speed up the dispute resolution process and reduce costs for everyone involved.
Now, what makes oppositions even more intriguing is that they often sidestep the traditional courtroom drama. Instead, many disputes get settled outside the TTAB, when the lawyers step into a negotiation room rather than a courtroom. A settlement can be reached in as quickly as a few days or stretch into a few months, depending on how complex the conflict is and how willing the parties are to work with each other to arrive at a suitable compromise.
If the opposition is settled, there’ll need to be a settlement agreement that outlines specific terms under which both parties can use their individual trademarks without infringing on each other’s rights. These agreement should be carefully negotiated in advance to prevent lengthy and costly legal disputes from developing later on.
But not every opposition story follows this streamlined script. In cases where disputes linger, the TTAB has to fully step into its decision-making role and review the legal arguments and evidence. However, these cases can be unpredictable. They unfold at their own pace, sometimes spanning years, during which the trademark application that’s being opposed still is not “officially” approved.
As you navigate through the maze of TTAB cases, it’s crucial to understand that some oppositions, particularly those involving larger brands, can take a more menacing turn. In some instances, these big players use the opposition process as a weapon to bully smaller businesses. They strategically prolong litigation, allowing costs to pile up and wear down their opponent who has limited financial resources. It’s a tactical move aimed at forcing the small business to either abandon the trademark or give in to the demands of the larger brand.
This darker side of the opposition process highlights the importance of not just having a solid legal game plan but also being resilient. For smaller businesses, facing an opposition from a trademark bully requires strategic thinking and even a legal ally who can help navigate through the complexities, ensuring that your trademark story doesn’t become a tale of David and Goliath. In the unpredictable world of trademarks, one thing is clear – having the right guidance can be the game-changer when facing an opposition.
If you’re not able to settle an opposition and have to wait for TTAB to decide on your case, there are two obvious outcomes: you could win or you could lose. If you win, your trademark application will be sent back to the USPTO examining attorney to officially approve it. If you lose, your trademark application will also head back to the USPTO examining attorney – but this time they’ll be issuing a final refusal of your application because of the TTAB decision.
Depending on the circumstances, you may have the option to appeal the TTAB decision. This involves taking the case to a higher court, such as the U.S. Court of Appeals for the Federal Circuit. However, the grounds for appeal are typically limited, and success is not guaranteed. It’s also really, really expensive.
Continuing to use a trademark after you’ve lost an opposition is usually a pretty risky thing to do. The opposer knows you exist and will probably be watching to see what you do next because they already have a legal decision in their favor. So if they’re not happy with your continued use of the trademark, they could make things a lot more difficult and costly for you by filing a trademark infringement lawsuit. These lawsuits are held in a traditional court, so there are no cost or time savings like in TTAB disputes. If the court believes you are infringing on the trademark, the judge can order you to stop using your trademark altogether and/or force you to pay your opponent for infringing on their rights.
A better option after losing a trademark opposition may just be to cut your losses and rebrand by choosing a more unique trademark.
Wrapping It Up
Whew! This blog post ended up being a dissertation on trademark rejections! Kudos to you on making it all the way through to the end.
But I’ve gotta be honest – what I’ve covered here barely scratches the surface on the things I’ve discussed. After reading this, you definitely have a better understanding of the world of trademarks, but not a complete understanding.
Trademarks are so complex that it’s impossible to condense all the twists and turns in the application process into an easy-to-read format like this. And while there are some legal issues that you can handle on your own with the right guidance, trademarks just aren’t one of them (at least in my opinion).
There’s a reason why people like me dedicate their entire legal careers to helping entrepreneurs safeguard their brands with trademarks. Because even after years of professional legal training, we have to keep up on constant changes in trademark law, balance that with industry trends and changes happening in the business world, and craft comprehensive strategies that align with our clients’ unique vision for their brand, reduce potential risks, and maximize protection. It’s enough to make anyone’s head spin!
This isn’t a knock on your capabilities; it’s a recognition of the sophisticated dance required to waltz through the legal intricacies of trademarks. Think of it this way: you wouldn’t go on a solo expedition up a challenging mountain without an experienced guide. Similarly, having a seasoned trademark attorney by your side ensures you’re equipped with the right tools and strategies to navigate the trademark landscape successfully.
If you’re struggling with how to deal with a trademark rejection, the best thing you can do for yourself and your peace of mind is to contact a knowledgeable trademark attorney for assistance.
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About The Content Creator
Faith Mitton, Esq.
About The Content Creator
Faith Mitton, Esq.
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