One of the most discouraging events of filing for a Trademark is receiving an Office Action letters from the USPTO for refusal to register the trademark. This is also sometimes known as a “2(d) Refusal” for its refusal on the basis of the Trademark Act 2(d). While it is disheartening to receive an Office Action refusing to register your trademark, it often need not be the end of the story.

Determine the Cause for Refusal

When drafting the Office Action, the USPTO Examining Attorney is required to establish the legal basis and foundation for their refusal. Read your Office Action to determine the cause for the refusal. If the Office Action lists information that is incomplete to file the Trademark application, sometimes, all that is needed is for you, the Applicant, to make corrections to your application and fill in the missing basic information. However, sometimes Trademark Applications are rejected via an Office Action 2(d) refusal.

Responding to an Office Action 2d refusal can be more involved, and it is advisable to seek legal counsel. The most common basis for refusal is “likelihood of confusion” with another existing mark. This is generally based on the trademark names, or a similarity between the goods and services of the two trademarks.

While it is disheartening to receive an Office Action refusing to register your trademark, it often need not be the end of the story.

Respond to the Office Action with Legal Arguments and Mind the Deadlines

Filing a response to an Office Action is similar, in some ways, to filing a court appeal. A well-drafted response to the USPTO should include legal arguments that establish the reasons why your mark is unique and can coexist with other existing trademarks on the trademark Principal Register. The Response will also answer all of the Examining Attorney’s arguments. It is crucial to be mindful of the response deadline as failure to respond by the deadline results in the mark being labelled “abandoned” by the USPTO.

Although no one wants to receive an Office Action letter from the USPTO refusing registration of their trademark, there are options available to Applicants to make efforts to overcome the refusal. We can help at Behrends Legal today! Feel free to contact us. Our flat fees keep things simple for you!

We look forward to discussing your Office Action matter, and creating a plan uniquely tailored to you!  

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