SAMPLE OFFICE ACTION

More Sample Offices Actions can also be found at http://merely-descriptive.com/merelydescriptiverefusals.html,    http://stepstoatrademark.net/officeactions.html,   http://notgeneric.com/genericrejections.html, http://stepstoabrand.com/typicalbrandnamerefusals.html and http://functionasamark.com/doesnotfunctionrefusals.html


SAMPLE OFFICE ACTION

 (redacted from USPTO Office Action for a mark that was denied Principal Registration)


RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.


MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.


Serial Number  XXXXXXX

The assigned trademark examining attorney has reviewed the referenced application and determined the following.


SECTION 2(d) REFUSAL    TMEP §§1207.01 et seq    Registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. XXXXXX  as to be likely to cause confusion, to cause mistake, or to deceive.    See registration information attached.


The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq.


Applicant’s proposed mark ULTIMATE XXXXX for “toys, games and playthings; computer software games”  is confusingly similar to the cited registrant’s mark:

ULTIMATE XXXXX w/ design, Registration No. XXXXX

IC 041. G & S: Entertainment services, namely, providing facilities for XXXXX.

IC 035. G & S: Retail store services featuring XXXXXX.


The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).


When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).

 The applicant’s proposed mark is identical to the word portion of the cited registrant’s mark, ULTIMATE XXXX.


The applicant has a legal duty to select a mark which is totally dissimilar to trademarks already being used.   Any doubt as to the issue of likelihood of confusion will be resolved in favor of the registrant and against the applicant.   Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).


The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following.


INSUFFICIENT FEES

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods that are classified in at least two international classes, however applicant paid the fee for only one class.

 

Applicant must either: (1) restrict the application to a single class covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

IDENTIFICATION & CLASSIFICATION OF GOODS  TMEP §1402.01.

Applicant has submitted the following identification of goods:

     Toys, games and playthings; computer software games

 The wording “Toys, games and playthings” in the identification of goods is unacceptable as indefinite.  Applicant must specify the common commercial name of the goods.

For example, if accurate, the applicant may amend this wording to:

    * Toys, games and playthings, namely, ____________________ [specify common commercial name of good(s) intended, e.g., action skill games, bath toys, bendable toys, musical toys,] in International Class 028


The wording “computer software games” in the identification of goods is unacceptable as indefinite.  Applicant must specify the common commercial name of the exact good(s)

For example, if accurate, the applicant may amend this wording to:

    * Computer game software, in International Class 009

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and services. http://www.uspto.gov/web/offices/tac/doc/gsmanual/


37 C.F.R. Section 2.71(a); TMEP §1402.06   While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  Therefor, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.


[The rest of the record is omitted. Full records can be found through  http://www.uspto.gov/main/trademarks.htm  which contains a search center that can be used to bring up other applications. The ‘TDR’ selection contains the prosecution record. ‘Outgoing Office Action’ contains whatever Office Actions were given for any applications that did not meet the requirements to USPTO registration.]


Answering Office Actions

There are no canned answers on how to answer office actions because there are no typical rejections, registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some rejections are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted and the information provided. See TEAS plus Requirements for more information on what information must be provided to the USPTO. Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. It depends on what is being refused and why.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law as submitted and do not qualify for common law protection because they  are have a likelihood of confusion with other registered or pending trademarks, lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning (generic terms).


If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, Not Just Patents ® Legal Services can provide your Response to Office Action (ROA). It may cost less than what you think and the time saved may be months or years or it may be your registration that is saved.


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Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

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Can I Abandon a Trademark During An Opposition?

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Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

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Change of Address with the TTAB using ESTTA

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Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

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Protecting Trademark Rights (Common Law)

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Section 2(d) Refusals   FilingforTrademark.com

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Counterclaims and Affirmative Defenses


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