What do I do now?
Oftentimes, an office action will be issued by the USPTO after you’ve filed your trademark with one or more rejections. An office action will ostensibly always have a response deadline of 6 months. Some of the rejections are non-substantive whereby the mark is not necessarily rejected, but a response must be submitted in order for the mark to be issued, such as a clarification to the classes of goods, a translation of the mark, or disclaimer. It is important to note, however, that certain rejections, like translation, may require an additional fee if the application was filed as TEAS Plus application and the translation was not originally included.
However, a rejection can also be substantive where the USPTO rejects the mark for various reasons, such as likelihood of confusion or mere descriptiveness, which are the two most common substantive rejections. If a substantive rejection is received, it is especially important to speak with an experienced trademark attorney as these rejections can be tricky to overcome. Trademark attorneys utilize prior rulings from the Trademark Trial and Appeal Board (TTAB), which is the governing body that decides proceedings for trademark oppositions, cancellations, concurrent use, and ex parte appeals, to help in arguing with the USPTO in trying to get the mark approved. In some situations, if a likelihood of confusion rejection is looking to be highly unlikely to be overcome, a consent or co-existence agreement may be sought with the registered owner of the mark being used against you.
Thus, there are many potential options when you have an office action. Speaking with an experienced trademark attorney is always a good idea as soon as you receive the rejection, because going it alone can be very difficult. After all, this is what we do, and we’ve seen all types of rejections before.
However, hiring an attorney prior to filing the trademark application may actually help to avoid an office action by ensuring the application is filed correctly. We can also advise you on rejections that will more than likely be issued, based on our expertise. Knowing the likelihood of rejections that are probably going to issue can help you to determine how to proceed. That could even make you dedide to change the brand name if you are very early stages in development.
Please contact us early in your trademark development as we can assist in ensuring your mark is available and free to use. But if you have already filed your trademark application and received an office action, let us know and we can assist in responding and hopefully obtaining your trademark.
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