If your trademark application is denied by the USPTO, you typically have a limited amount of time to respond to, amend, or appeal the decision issued by the office. Receiving a denial can be upsetting, especially considering the review process can take up to 18 months to complete. As such, understanding how to proceed in the event the application is denied is critical. Continue reading to learn what to do if your trademark application gets denied and how an experienced New Jersey trademark lawyer at The Ingber Law Firm can help you get the protection you need.
Why Does the USPTO Deny Trademark Applications?
Trademark application denials are common in the event that the USPTO finds that the proposed mark does not meet statutory requirements to be approved for registration. It’s important to understand that these decisions are generally based on the legal standing of the proposed mark rather than incomplete applications or clerical errors.
Common Legal Reasons for Trademark Application Denial
- Risk of confusion with an existing or pending trademark
- The mark fails to meet the primary function of a trademark
- The mark is primarily geographically descriptive
- The mark is merely descriptive of the goods or services being provided
- The mark is generic or has become generic through common use
How Will I Know if My Trademark Application Has Been Denied?
Once submitted, trademark applicants must monitor the status of their application. This is because denials are not automatic, but are generally the result of a formal review process. As such, the USPTO will communicate refusals through official written notices rather than through the use of informal updates.
How Applicants Are Notified of a Trademark Denial
- Status updates posted in the USPTO’s Trademark Status and Document Retrieval (TSDR) system
- Issuance of a non-final Office Action that details the grounds on which the application was denied
- Delivery of the Office Action through the mail or electronic communication
In short, the denial will formally be communicated to the applicant through an Office Action, which will also detail any deadlines and next steps.
What Steps Should I Take If My Trademark Application Is Denied?
In the event that your trademark application is denied, it’s necessary to understand that you have a limited window to take action. If you fail to respond within this period, the USPTO will consider your application officially abandoned, and you will be unable to pursue any action. Instead, you’ll need to refile with a modified mark.
Immediate Actions to Take After a USPTO Office Action
- Carefully review the reason for refusal listed by the examining attorney
- Determine whether the denial was based on procedure, substance, or both
- Identify the response deadline provided in the Office Action
- Determine the best course of action to respond to the denial
How Should I Respond to a Trademark Office Action?
In the event your application is denied, and you are notified via Office Action, you should note that you are generally permitted to submit a formal response that directly addresses the concerns raised by the USPTO. However, this response must be legally valid, and claims must have supporting evidence and documentation to help strengthen the response. In general, responses are submitted electronically and will become part of the public trademark record.
Common Response Strategies to Overcome Denial
- Legal arguments help distinguish the mark from cited registrations
- Amendments narrow or clarify the goods and services described in the applications
- Evidence may be submitted to help show distinctiveness
- Disclaimers of non-distinctive components of the trademark may also be submitted
In the event you wish to respond to an Office Action, it’s necessary to understand that you must respond to each individual refusal ground. Additionally, the more evidence you can provide, the more it will help, especially in descriptive cases.
What Happens if the USPTO Issues a Final Refusal?
In the event that the USPTO still has a reason to believe your application should be rejected after reviewing your response and the additional evidence submitted, it may issue a Final Office Action. At this point, you must decide whether or not you should abandon the application or if you wish to escalate the matter to an appeal. An appeal involves substantially different procedures and evidentiary standards.
Options After Receiving the Final Notice
- Appeal to the Trademark Trial and Appeal Board (TTAB)
- Request reconsideration and provide additional evidence and documentation if possible
- Abandon the application and refile with a modified proposed trademark
Why Is Working with a New Jersey Trademark Attorney Important?
While trademarks are governed by federal law, New Jersey businesses face regional competitive considerations that can ultimately impact how trademark applications are evaluated, and in the event of a denial, defended.
Benefits of Local Trademark Counsel in Northern New Jersey
- Experience responding to the examining attorneys with the USPTO
- Strategic guidance on branding risks
- Assistance with appeals
- Understanding of trademark issues and regional markets
Contact an Experienced New Jersey Trademark Attorney
To learn more about how to handle your trademark application, please get in touch with a skilled Essex County, New Jersey intellectual property lawyer from The Ingber Law Firm. Better yet, schedule your free initial consultation with our firm today.