Should You File Your Own Application,

Answer Your Own Refusal, or Defend Your Own Trademark Opposition?

It looks easy but it isn’t. About 70% of trademark applications are refused at least once. Filing a USPTO trademark application is a legal proceeding that requires an applicant to satisfy many legal requirements within strict time deadlines. An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney. The USPTO is represented by an experienced  well-trained full-time attorney. All trademark information–Trademark Applications (applications, drawing, specimen), Office Actions, Responses to Office Actions (ROA), assignments, petitions, etc– submitted to the USPTO is public information readily available to the public including any of your investors or future potential investors.

Having a solid, enforceable trademark and trademark application and registration is a good investment. Most Not Just Patents’ clients are small businesses but we also do work for other attorneys.

Trademark Appeals, Trademark Oppositions  and Trademark Cancellations require an understanding of trademark law and TTAB (Trademark Trial and Appeal Board) procedures. Pro se (no attorney) plaintiffs and defendants are allowed but are held to the same standards as an attorney.


Overcoming A Substantive Refusal

Not Just Patents ® Legal Services answers refusals for any of our application clients as part of the service at no extra charge. We also answer refusals for clients who have used other services and sometimes will even offer a discounted service if you used one of the form services who really messed up your application.

If an applicant is not represented by an attorney it is called pro se. A pro se applicant may be able to answer refusals themselves but keep in mind that your adversary, the USPTO trademark examiner, is a well-trained full-time attorney with experience in deciding if applications meet USPTO rules and trademark law.

If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. If you are going to try and answer the refusal yourself, you should simply and completely address the points raised by the examining attorney in the Office Action. Applicants are not required to provide case law support but may if it is appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal.

Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board and submit a request for reconsideration if appropriate; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. The same trademark issues that caused the refusal may also limit the rights associated with the mark under common law.


MERELY DESCRIPTIVE ISSUES

Office Action(s) from USPTO

The refusal rate for trademark applications is very high, about 70% of applications receive at least one office action refusal and ultimately about half register as trademarks. Some actual redacted refusals for being “merely descriptive” are shown below.

Applicants (or their representative) must address each issue raised by the examining attorney and responses to office actions (ROA) must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned.

If the first response does not overcome all refusals, the examining attorney will issue another refusal or a final refusal. [Some trademark applications take years to cycle through all the refusals and replies.]

An examiner may suggest registration on the Supplemental Register as an alternative to the Principal Register to overcome a merely descriptive refusal, distinctiveness refusal or failure to function as a trademark or other reasons. See Comparison of Principal Register and Supplemental Register.

To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.


For Oppositions based on Merely Descriptive trademark applications, see Merely Descriptive Oppositions. For help overcoming a merely descriptive and other refusal, call Not Just Patents® Legal Services.


Examples of Actual (redacted) USPTO Statutory Refusals

(The word FOOD in the following redacted USPTO Office Action replaces the name of the food that applicant makes. The mark was refused and later finally refused as being generic and was abandoned.)


Section 2(e)(1) Descriptive Refusal

Registration is refused because the proposed mark merely describes the featured shape and ingredient of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).


The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

Applicant’s mark “FOOD LOG” literally means “usually large section of a trunk or limb of a fallen or felled tree” made of “FOOD.”  See Attachments “log” and “pb.”  When used on the goods, namely XXXXX, the term “FOOD log” would merely point to the featured shape and ingredient of such goods: that they are made from “FOOD” and come in the shape of a “log.”  When used as such, applicant’s mark would merely describe the goods.


A term that describes an ingredient of the goods is merely descriptive, within the meaning of Section 2(e)(1).  In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (C.C.P.A. 1973) (CREME DE MENTHE merely descriptive of candy); In re Keebler Co., 478 F.2d 1264, 178 USPQ 155 (C.C.P.A. 1973) (RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam 928 F.2d 411 (Fed. Cir. 1991) (OATNUT merely descriptive of bread containing oats and hazelnuts); Flowers Industries, Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (HONEY WHEAT merely descriptive of bread containing honey and wheat); In re International Salt Co., 171 USPQ 832 (TTAB 1971) (CHUNKY CHEESE merely descriptive of cheese flavored salad dressing); In re Demos, 172 USPQ 408 (TTAB 1971) (CHAMPAGNE descriptive of ingredient of salad dressing).

 A term that describes the form or shape of a product is merely descriptive under Section 2(e)(1).  In re Metcal Inc., 1 USPQ2d 1334 (TTAB 1986) (SOLDER STRAP descriptive self regulating heaters in form of flexible bands or straps); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982) (TOOBS held merely descriptive of bathroom and kitchen fixtures in the shape of tubes).

Based on the above discussion, the examining attorney refuses registration of applicant’s mark on the Principal Register.

Supplemental Register

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusals under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.


[NOTE: It got worse, after the next round, the examiner suggested that the mark was not just merely descriptive but was actually generic and refused registration on the Supplemental Register as well.]


Section 2(e)(1) Descriptive Refusal with Generic Advisory

In the previous Office action, the examining attorney refused registration of the proposed mark because it is merely descriptive of the identified goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.  The examining attorney maintains the refusal.  Moreover, the proposed mark appears to be generic as applied to the goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

A two-part test is used to determine whether a designation is generic:

(1) What is the class or genus of goods or services at issue?

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

Specifically, the attached evidence from internet websites shows that the proposed mark “FOOD log” is the common generic name for a type of XXXXX that looks like a tree log that that is made of FOOD.  

In its response to the previous Office action, applicant argued that its proposed mark is suggestive:

 

An exercise of imagination, cogitation, mental processing or gathering of further information is required in order for consumers for applicant’s XXXXX products, to readily perceive the significance of the mark FOOD LOGS as it relates to a XXXX product.  The applicant has been producing XXXX products for over 50 years and currently has a product it calls the FOOD BAR.  Applicant has determined through marketing that the new mark FOOD LOGS would likely provide for more sales of the same product.  The XXXXX that will be sold under this mark does not have any readily apparent FOOD.  The flavor of FOOD is only a part of the product.  Additionally, the XXXXX is made in large and small rectangle bite size pieces that are crunchy and not paste like (which would be the case if it were made from FOOD).  The shape of the XXXXX does not look like a log nor does it have the appearance of a log.  The only relation to actual FOOD is the flavor that the consumer tastes.  Such an exercise of imagination, thought or perception to reach a conclusion as to the product or service means the term is suggestive, not descriptive. In re Nobile Co., 225 U.S.P.Q. 749, 750 (T.T.A.B. 1985).  When the issue of whether a mark is merely descriptive or suggestive is not clear, the question is to be resolved in favor of the applicant.

 

As the attached evidence indicates, a “FOOD log” is a type of XXXXX that features FOOD and may come in the shape of a tree log or just a generally rectangular or round bar.  As applicant argued, its goods will contain FOOD flavor, and will come in “small rectangle bite size pieces.”  These qualities are common among FOOD log XXXXX, as the evidence pictures show.

 Based on the above discussion, the refusal to register applicant’s mark under Trademark Act Section 2(f) [acquired distinctiveness], 15 U.S.C. §1052(f) is therefore maintained and made FINAL.  An amendment to the Supplemental Register therefore cannot be recommended.


Section 2(e)(1) - Descriptive Refusal

[This mark was abandoned along with a bunch of other associated marks with the same problems. The words FAMOUS DEAD PERSON replace the actual name that was proposed to be registered.]


Registration is refused because the proposed mark merely describes a feature and characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.


A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

Applicant’s mark is “FAMOUS DEAD PERSON” for a variety of goods in International Class 021 including Canteens; Cast stone containers for household and garden use; Ceramic figurines; Coasters not of paper and not being table linen; Combs; Containers for household or kitchen use; Cookie cutters; Cookie jars; Dinnerware; Dishes; Figurines of china, earthenware, and/or porcelain, etc. Attached evidence indicates that FAMOUS DEAD PERSON was an American XXXXX.  Presumably, applicant’s goods will feature a representation of an image or the likeness of FAMOUS DEAD PERSON or the literary works of FAMOUS DEAD PERSON.  As such, the term FAMOUS DEAD PERSON merely describes a feature of applicant’s goods; specifically that applicant’s goods feature information or the works of FAMOUS DEAD PERSON. Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act.

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  

Section 2(e)(1) – Mark is Merely Descriptive for International Class 16

[this mark was later abandoned]

Registration is refused because the proposed mark merely describes the intended user of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

The applicant applies to register the mark XXXXX & XXXXX for use in connection with goods for weddings and engagements.  The mark merely describes the intended user of the goods.  Specifically, the applicant is providing products for XXXXX and XXXXX.  Please see attached definitions as further proof of the descriptive nature of this mark.

[deleted]

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).

Descriptiveness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).

The two major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant.  This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.  In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).


Answering Office Action Refusals

There are no canned answers on how to answer office actions for the refusals received because there are no typical refusals, registration of a mark is specific to the facts involved. Some refusals 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. 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 (see Trademark Disclaimer Requirements). 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 rejected and why.

Often when we answer refusals we also help clients develop a strategy for using their trademarks, experience matters. Looking at the big picture and long term goes beyond filling out a form.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law and do not qualify for common law protection because they lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning.


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, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.

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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

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

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

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  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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