Six Tips for Avoiding a USPTO Trademark Office Action

Elliott Stapleton Trademark

Previously, I wrote about two important considerations to keep in mind when selecting a trademark: (1) avoid creating a likelihood of confusion with a pre-existing trademark and (2) select a legally strong mark. In addition to those two considerations, there are several other issues to keep in mind if you want to register your mark with the United States Patent and Trademark Office (USPTO) and avoid an office action.

An office action is a response from the USPTO related to some aspect of your trademark application that does not meet the legal requirements for registration or requires clarification or additional information. You are given the opportunity to respond to the office action with information or arguments that will satisfy the examining attorney.

In another article, I discussed how the federal trademark registration process is much more than simply filing an application. It is a complicated legal process that involves an examining attorney at the USPTO verifying that your application meets all the legal requirements for registration. Due to the subjective nature of trademarks, it is impossible to completely eliminate the risk of an office action from the USPTO, but here are some considerations that will help reduce that risk:

1. Avoid immoral, scandalous, deceptive, and disparaging marks. Although the constitutionality of this bar on registration is being challenged, for now, you cannot register as a trademark any mark the USPTO considers immoral, scandalous, deceptive, or disparaging. For example, the USPTO considers “asshole” immoral and thus will not register a trademark incorporating that term.

2. Obtain consent for marks incorporating another’s name or likeness. You cannot register a mark containing the name, recognizable nickname, portrait, or signature of a living individual without his or her written consent, which you must submit to the USPTO with the application. You do not want to lose your nonrefundable filing fee because the person whose name you incorporated had no idea it was being used and is unwilling to give you written consent.

3. Avoid using geographically descriptive marks. The USPTO will not register your trademark if it consists primarily of a generally known geographic location, your goods or services originate from that location, and customers are likely to believe that is where your goods or services come from. For example, in 2014 the USPTO refused to register the mark HOLLYWOOD LAWYERS ONLINE for an attorney referral website based in Hollywood, CA.

4. Avoid using geographically deceptive marks. If your trademark consists of a generally known geographic location, your goods or services do not originate from that location, but your customers are likely to believe they do and this results in a material misrepresentation, the USPTO will refuse to register your trademark. In other words, do not represent that your goods come from a well-known location, when they actually do not, in hopes that your customers will rely on that representation to purchase your goods or services.

5. Avoid using your surname. Everybody has a right to obtain trademark registration for their own surname, right? Wrong. There are too many “Smiths” in the world to allow this to happen. Therefore, the USPTO will not register marks that are primarily a surname unless the surname has acquired secondary meaning in the minds of consumers (i.e. when you hear “McDonald’s restaurants, do you think of the Golden Arch or do you think your neighbor McDonald from down the street opened a hamburger spot? That is a secondary meaning.).

If you have a unique surname, however, you may be able to avoid this bar to registration.

6. Choose a good specimen. At some point, every trademark applicant must submit evidence showing the actual use of its trademark in commerce (called a “specimen”). A picture of the mark is not enough. It must be shown in conjunction with the goods or services listed on the trademark application. If you are selling a good, for example, tags, labels, and packaging showing the mark on the good are generally sufficient specimens. If you are offering services, the mark must be shown in relation to a description of those services. A failure to satisfy this requirement will result in a refusal to register your mark.

The items above are only a few of the issues that must be considered if you want to obtain a federal trademark registration.

By selecting a strong trademark, you can reduce the risk of receiving an office action from the USPTO. If you do receive an office action, contact us as soon as possible.

Every office action has a strict deadline for a response. For other questions regarding whether a mark can be registered, selecting a strong trademark, or filing the UPSTO application, please feel free to set up a free consultation with one of our trademark attorneys.

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About the Author

Elliott Stapleton

Elliott is a partner in the firm of Cornetet, Meyer, Rush and Stapleton serving clients throughout Ohio. Elliott's business clients range from small single member companies to large privately-held businesses. CMRS Law provides legal services which include advice on Business Formation and Transactions, Real Estate Transactions, Trademark Law, Copyright Law, Estate Planning, Trust Administration, Probate Administration, and Succession Planning. CMRS Law serves clients at two locations: 123 Boggs Lane, 1st Floor, Cincinnati, Ohio 45246 and 2101 Grandin Road, Suite A, Cincinnati, OH 45208