The United States Patent and Trademark Office (USPTO) examines every application to register a trademark for compliance with federal laws and rules. If a USPTO trademark examiner finds an issue with your trademark application’s compliance with these laws and/or rules, he/she will issue an “Office Action”.

Office Actions come in two types: 

  • Administrative. Administrative Office Actions seek clarification about your application such as seeking more information about the products or services in your application, a clearer image file of a logo, or revisions to a description of your proposed trademark. 
  • Substantive. In a substantive Office Action, the examiner specifies one or more reasons for their registration refusal. 

Here are some of the most common reasons for a substantive refusal to register a trademark:

1. Likelihood of Confusion

The most common reason for refusing to register a trademark is a “likelihood of confusion” between your proposed trademark and a trademark that’s already been registered (or which is the subject of a pending, previously-filed application). The USPTO determines that a likelihood of confusion exists when:

  1. The two trademarks are similar.
  2. The goods or services of the parties are so related that consumers could mistakenly believe that they come from the same source.

Likelihood of confusion can be found even if the two trademarks aren’t identical, and even if they’re not in the same “class” of goods or services designated by the USPTO (although they need to be “related” or at least similar). Also, proof of actual confusion isn’t necessary to reject the registration, only that the two trademarks are similar enough to cause a “likelihood” of confusion as to the source of the goods or services. 

Here are some examples of conflicting trademarks that were found likely to confuse consumers (the second reference is to the pre-existing trademark):

  • 21 CLUB for men’s, boy’s, girl’s and women’s clothing was held likely to be confused with the 21 CLUB (stylized) for restaurant services and towels.
  • STEELCARE INC. for furniture, office furniture and machinery refinishing was held likely to be confused with STEELCASE for office furniture and accessories.
  • JOSE GASPAR GOLD for tequila was held likely to be confused with GASPAR ALE for ale.

2. Merely Descriptive and Deceptively Misdescriptive

“Merely descriptive” trademarks identify a quality, purpose, function, characteristic, ingredient, or use of the goods or services. Not all of these items need to be described for a term to be merely descriptive; only one significant function, attribute or property is necessary. Registration of merely descriptive trademarks will be refused unless you can show that the public sees your trademark as distinctive (i.e. it has acquired “secondary meaning”). 

Some examples of merely descriptive trademarks include THEATL (equivalent to THE ATL, a common nickname for Atlanta, GA) for publications featuring news and information about Atlanta; OATNUT for bread containing oats and hazelnuts; and URBANHOUZING for real estate services.

A “deceptively misdescriptive” trademark mis-describes a quality, purpose, function, characteristic, ingredient, or use of the good or service (i.e. it misrepresents those elements). If the examiner also feels that anyone is likely to believe this misrepresentation, trademark registration will be refused, although a deceptively misdescriptive trademark is still eligible for registration if it acquires secondary meaning. 

In contrast, purely “deceptive” trademarks are never registerable. Deceptive trademarks are the same as deceptively misdescriptive trademarks except for the presence of an additional element: proof that the misrepresentation is likely to affect a consumer’s decision to purchase the goods or services. This is consistent with the objective of trademark laws to protect consumers from deception and confusion. 

An example of a deceptively misdescriptive term that was refused registration is TITANIUM for recreational vehicles that didn’t contain titanium. An example of a deceptive term that was refused registration is ORGANIK for clothing from cotton that wasn’t organically grown or free from chemical processing. The reason why TITANIUM was found deceptively mis-descriptive (and therefore still eligible for registration upon a showing of secondary meaning) and ORGANIK was found outright deceptive (and therefore never eligible for registration), even though there was deception in both terms, was that there was proof in the ORGANIK case that the misdescription was material to the purchasing decisions of consumers, while there was no such proof in the TITANIUM case.

3. Geographically Descriptive, Geographically Misdescriptive, and Geographically Deceptively Misdescriptive

There terms are similar to the terms just discussed. Geographically Descriptive terms “primarily” and accurately indicate the geographic area where your product or service originates. Examples of geographically descriptive trademarks are BANK OF TEXAS and YELLOWSTONE OUTFITTERS.

Geographically descriptive terms are typically “weak” trademarks entitled to narrow trademark protection even though they may be strong from a marketing standpoint. “Narrow” means that the trademark may only be registerable on the USPTO’s “Supplemental” register until it acquires secondary meaning, if ever. Once it does, though, it’s eligible for registration on the USPTO’s “Principal” register. 

The Principal register is reserved for strong and distinctive trademarks, while the Supplemental register is for merely descriptive trademarks. Although a trademark on the Supplemental register is still a registered trademark, you have less protection in the case of infringement than you would with a trademark on the Principal register. 

Geographically misdescriptive terms are primarily geographic but don’t accurately indicate the geographic area where your product or service originates. As long as the term isn’t also deceptive, it’s registerable upon proof of secondary meaning. Geographically deceptively misdescriptive terms are the same as geographically misdescriptive terms except that, in the case of geographically deceptively misdescriptive terms, there is proof that the misrepresentation as to the geographic area was a material factor in a consumer’s decision to purchase your goods or services.

Geographically deceptively misdescriptive terms are never registerable as trademarks even if they acquire secondary meaning. Example: KUBA KUBA for cigars, tobacco, and related products that didn’t originate in Cuba and weren’t made from Cuba seed tobacco. 

4. Surnames

Only surnames that have secondary meaning are registerable as trademarks. If the public views a surname trademark as a reference to your products or services, and not as a reference to your last name, that surname trademark is registerable. Surname trademarks that have acquired secondary meaning include McDonald’s, Ford, Kellogg’s and Dell.

5. Ornamentation

If your proposed trademark functions as a decorative feature of the goods rather than as a trademark which distinguishes your goods, registration of that trademark will be refused. Examples of ornamental trademarks include the logo of a sports team on a hat where the sports team didn’t manufacture the hat or a quote displayed across a T-shirt which doesn’t identify the T-shirt manufacturer, like Hanes or Champion.

How Becker Law LLC Can Help

Whether an Office Action is administrative or substantive, continuing with your registration application requires that you respond to the examiner within six months. However, don’t wait until the last minute. Depending on the reason for the Office Action, you’ll need time to prepare your response, including seeking help from a trademark attorney who’ll work with you to make your response as strong and persuasive as possible.

Becker Law LLC can assist you in all aspects of the trademark registration process, including responding to an Office Action. Contact us today to get started.

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