When a trade mark application is filed with the USPTO it is assigned to an Examining Attorney whose job entails conducting a conflicting trade mark search and evaluating the trade mark application. The results of the conflicts search and the examination dictate whether or not the application will be approved or whether a refusal will be issued.
A refusal that’s issued by the USPTO is called an office action and these are common during the examination process, especially for DIY applicants and Legalzoomers. The basis for the refusal will be cited in the office action and it’s the responsibility of the applicant (or applicant’s attorney) to respond to the office action in a timely manner to avoid abandonment of the application and the loss of filing fees.
The correct response procedure depends on the nature of the refusal that’s been issued. If the Examining Attorney finds conflicting trade marks during the clearance search then a 2(d) likelihood of confusion refusal may be issued. If the application or accompanying materials were drafted or submitted incorrectly there are several other common refusals that may be issued. These include merely descriptive refusals, deceptively misdescriptive refusals, geographically descriptive refusals, insufficient specimens of use, ornamental refusals, primarily merely a surname refusals, among others.
If you have received one of these common refusals you should consider consulting with a trade mark attorney. We are often hired by DIY applicants to correct their application mistakes and get USPTO office action refusals overturned. Contact us for a free phone consultation and we’ll discuss your options.