US Office Action in Madrid Protocol Trademark Application
Madrid Protocol trademark applications that enter the US through Section 66(a) will often encounter several issues. There may be substantive refusals and nonsubstantive issues. Substantive rejections may include a likelihood of confusion or merely descriptive refusal, or both.
Nonsubstantive issues typically do not require an extensive response. Let’s discuss how to handle a US Office Action for your Madrid trademark application.
Need to respond to a US trademark Office Action? Email US patent and trademark attorney Vic Lin at vlin@icaplaw.com to see how we can help you file a proper Office Action response.
Response Deadline for US Trademark Office Action in Section 66(a) Madrid Protocol Application
A US Office Action in a Section 66(a) Madrid trademark application will have a non-extendable 6-month response deadline. The 6-month deadline is calculated from date on which the notification was sent to WIPO.
Unlike domestic US trademark applications which have a 3-month extendable deadline, this longer 6-month due date for Madrid Office Actions in the US cannot be extended.
The USPTO provides a helpful timeline for Madrid Protocol applications based on Section 66(a) [see TMEP Section 1900].
What is the cost of responding to a non-substantive Office Action for a Madrid trademark application?
If a US Office Action contains only non-substantive issues, then our firm’s flat rate estimates for a response will be substantially lower than the fees necessary to address substantive issues.
Nonsubstantive Trademark Issues
Nonsubstantive issues are fairly straightforward to resolve. Generally, they do not require arguments. Therefore, the cost of a nonsubsantive response is typically lower.
The following examples of non-substantive issues are commonly raised in a US Office Action in a Section 66(a) Madrid Protocol trademark application.
Identification of Goods and Services
Madrid applications that originate outside the US tend to have long lists of goods and/or services. This common occurrence may be due to the fact that many Madrid countries other than the US do not require the applicant to use the mark on each product or service.
If a Madrid Protocol application contains a high number of items, then there is a good probability that the US trademark examining attorney will require modifications to the identification of goods/services to conform to USPTO trademark standards. Keep in mind that the scope of the amended goods and services may not be broader than the scope of the original identification.
Description of the Mark
The requirement for an amended Description of the Mark often arises when the applied-for mark is a design mark. Unlike a word mark, the USPTO requires an accurate and complete description of a design mark. The description of the mark should specify any design elements, graphic images, colors, shapes and wording [see TMEP Section 808].
In most cases, the USPTO trademark examining attorney will propose a satisfactory description of the mark in the Office Action which the applicant can simply adopt in a response.
Type of Entity of Foreign Applicant
Sometimes, the nature of the foreign entity is unclear. This is a simple fix where the applicant will clarify the type of entity (e.g., corporation).
Explanation of Mark’s Significance
It is not uncommon for Madrid trademark applications to contain foreign words or wording that sounds like a foreign language. In many cases, the Office Action may inquire as to whether the mark has any meaning in a foreign language. If an explanation is required, the applicant’s response must provide an English translation or indicate that the wording has no meaning in a foreign language.
Disclaimer of Generic or Descriptive Words
If US examining attorney feels that certain words in the mark are generic, then a disclaimer may be required for that portion of the mark. In most cases, it would be more cost-effective to agree to the disclaimer rather than argue against it. In special circumstances, a mark might contain a verb, punctuation or prepositions to create a unitary phrase where a disclaimer should not be required (e.g., TIP YOUR HAT for hats; or MANGOES FOR THE EARTH for fresh mangoes).
U.S.-Licensed Attorney Required
In response to US trademark Office Actions, all Madrid Protocol applicants must be represented by a U.S.-licensed attorney.
Note that patent agents are not qualified to respond to US trademark Office Actions.
Potentially Substantive Trademark Issues
Certain trademark objections have the potential to increase the complexity and cost of a response if the applicant chooses to argue against them. Therefore, you can keep costs down by choosing not to argue against the following objections.
Required Disclaimer
The Office Action may require a disclaimer of certain words in your mark that they believe to be merely descriptive or generic. While you can choose to argue against a requested disclaimer, simply providing the requested disclaimer will keep the cost of a response down. Recognize that you will need to accept the limiting consequences of a disclaimer in your trademark registration.
Partial Likelihood of Confusion
A partial likelihood of confusion is a rejection applied to a subset of the goods or services in a trademark application. To keep costs down, you can choose to delete the rejected goods or services and forfeit any arguments.
Substantive Trademark Issues
Substantive trademark issues require more work to resolve. Responses to substantive trademark Office Actions, therefore, will generally cost more. Here are some common substantive trademark issues.
Likelihood of Confusion – Section 2(d)
Likelihood of confusion refusals will generally require significant efforts to overcome. Arguing might not always be the most effective option. If you wish to argue, make sure to make strong arguments against likelihood of confusion.
Merely Descriptive – Section 2(e)
A merely descriptive refusal means that the USPTO trademark examining attorney believes the applied-for mark describes a quality or characteristic of the goods or services identified in your Section 66(a) trademark application.
A successful response against merely descriptive rejections may involve a thorough analysis of the meaning of the mark and comparisons of that meaning to the goods or services identified in the trademark application.
Costs for Substantive Office Action Responses in Madrid Applications
Substantive rejections require much more than copy-and-paste responses, which explains the higher cost. Our firm’s estimate for responding to substantive trademark Office Action may start at $3,500. We can provide flat rate estimates.
Section 66(a) Trademark Opposition
A Section 66(a) trademark application entering the US might be seeking registration on the basis of a foreign registration, and not on any actual use in US commerce.
In opposing a Section 66(a) trademark application, therefore, a claim of nonownership through lack of use will not succeed.
Experienced US-Licensed Trademark Attorney for US Office Action in Madrid Protocol Trademark Application
Reach out to US patent and trademark attorney Vic Lin at vlin@icaplaw.com to see how we can help you respond to a US Office Action and get your Madrid trademark registered in the US.
