As mentioned in an earlier post “[M]uch of a trademark attorney’s time is spent … preparing and submitting arguments to the U.S. Trademark Office (or foreign trademark offices) that respond to a refusal on the grounds that a mark is generic or merely descriptive.”  In the U.S., the refusal mentioned comes in the form of an “Office Action,” which is a communication from the Trademark Office to the Applicant (or its attorney, if one has been appointed) that sets forth one or more reasons the Examining Attorney believes that the mark cannot be registered or that the application is deficient.

Although a trademark application will go abandoned if an Office Action is not responded to, not all Office Actions are created equal.  Without going into the numerous issues that can be raised by an Examiner, the item(s) that are contained in an Office Action can range from the fairly benign (e.g., forgetting to list the Applicant’s state of incorporation) to significant (e.g., a refusal based on a likelihood of confusion with a prior application or registration), to something in between.  Similarly, the nature of the issue(s) raised reflects the level of difficulty (and cost) in resolving them; when difficult or complex issues arise, Applicants can particularly benefit from the knowledge and experience of an attorney focusing on trademarks.

Although the USPTO has an excellent electronic filing system for formally responding to Office Actions, where the issues raised are minor they can frequently be resolved through a direct discussion with the Examiner.  The Examiner then will memorialize the discussion and the agreement reached in a document called an “Examiner’s Amendment,” and resolving issues in this manner (where possible) can lead to faster and less expensive prosecution of trademark applications.

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Danielson Legal is a boutique intellectual property and technology law firm in Cambridge, Massachusetts.

We represent international, national and regional companies, both large and small, in a variety of trademark, patent, copyright, licensing, and related areas of practice.

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