Was your trademark application rejected again?
It can be frustrating to receive a second refusal in your trademark application. Would filing another argument be a waste of money? Let’s explore smarter options when your trademark application is rejected again.
Need to overcome a second trademark rejection? Email your trademark application number and budget to US patent and trademark attorney Vic Lin at vlin@icaplaw.com.
What are the trademark refusals maintained in the Final Office Action?
Your available options will depend on the type of refusal contained in the Final Office Action. For example, you might have a merely descriptive or a likelihood of confusion refusal. Perhaps, your mark is rejected on the basis that it fails to function as a source of goods or services.
Failure to Function Refusal: What are your options when this refusal is repeated again?
A failure to function refusal can be quite challenging to overcome, especially when it is maintained in a Final Office Action. Your first Office Action response may have already contained arguments about how your mark is capable of indicating source. Unconvinced, the USPTO trademark examining attorney has repeated that refusal in the Final Office Action. What are your options?
In this situation, the issue may boil down to consumer perception. Would consumers take the words in your mark at their ordinary meaning or read into them some special meaning distinguishing your product from similar products of others? You may need to submit substantial evidence to show that consumers associate your mark with your product.
Trademark rejected again for being merely descriptive?
So your first arguments failed to convince the trademark examining attorney to withdraw a merely descriptive refusal? Should you submit further arguments in response to a Final Office Action?
Unless you have new arguments and evidence that are substantially stronger than those in your first response, further arguments might not be the best use of your resources. Instead, consider amending to the Supplemental Register. Note that Intent-To-Use applications cannot be amended to the Supplemental Register until after evidence of use has been submitted.
Trademark rejected again for being too similar?
Your first response likely contained arguments about how your trademark is not similar to one or more cited trademark registrations. What are your options when a likelihood of confusion refusal is maintained in a Final Office Action?
You may want to have an experienced trademark attorney investigate the blocking registered trademark to explore options. The USPTO now offers cost-effective ways to challenge a registered trademark that has not been used or is no longer in use.
You might also try a nicer approach and seek a coexistence agreement. The problem is, trademark registration owners tend to be for-profit companies or business owners. And those folks tend to avoid cooperation unless compelled. So you need leverage. An experienced trademark attorney can search for potential vulnerabilities in the blocking registration and then provide options for challenging the registration.
2nd Trademark Rejection: Would making further arguments be a waste of money?
When your trademark application is rejected again, do not simply search for the cheapest option to file another set of arguments. Sometimes arguments might work if there are significant new points or pieces of evidence to submit. Oftentimes, however, further arguments go nowhere.
We can evaluate your trademark application and provide recommendations for a flat rate. Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to request a flat fee review.
Should you consider filing a new trademark application for a different mark?
A new application for a different mark might have fewer obstacles, but you’ll need to balance the additional costs and timing of applying for a new mark. Do your due diligence and consider a knockout search before filing.
