Response to Trademark Office Actions 

Once you file for the Trademark registration you may receive the examination report (Objections or Office Actions) by the IPO offices. Every country has its own criteria for the examination. However, the legal framework is more or less similar which is created under the WIPO.The office action may include multiple objections e.g disclaimer and the description which are considered normal objections and office action related to 2d, 2e objections are kind of serious objections.

There are different kind of objections you may face as follows

  • Disclaimer amendments
  • Description amendments
  • Amendment of Goods and Services
  •  Likelihood of Confusion
  • Merely Descriptive and Deceptively Misdescriptive
  • Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive
  • Primarily Merely a Surname
  • Ornamentation
  • Specimen Refusal
  • Final Office Action

 

The objections which may be considered sometimes normal and do not seriously affect your trademark are Disclaimer and Description, amendment of goods, and services. The objections which may affect your trademark applications are 2(d), 2(e), sir names, geographical indication, descriptive or deceptive. You may overcome these types of office actions by supporting legal arguments. 

Likelihood of Confusion

The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, it is not required that the marks and the goods/services be exactly the same; instead, it is sufficient if the marks are similar and the goods and or services related such that consumers would mistakenly believe they come from the same source

Merely Descriptive and Deceptively Misdescriptive

The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.  For example, the mark “CREAMY” would be merely descriptive for yogurt and the mark “WORLD’S BEST BAGELS” would be merely descriptive for bagels.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive:

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive: The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is a generally known geographic location; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.  For example, the mark “THE NASHVILLE NETWORK” would be primarily geographically descriptive of television program production and distribution services that originate in Nashville, Tennessee.

Primarily Merely a Surname

The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a “surname”, i.e., a family name or last name.  For example, the mark “BINION’S” would be considered as primarily merely a surname.  In addition, the mark “HAMILTON PHARMACEUTICALS” would be considered primarily merely a surname for pharmaceutical products.

Ornamentation

In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the “dress” of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others.

Note: Some information is gathered from USPTO to better explain the objections or office action types.

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