How to Respond to USPTO Office Actions
Alt Legal Team | April 06, 2022
After filing a trademark application, the Examining Attorney will often issue an Office Action before approving the mark for publication. Office Actions are intended to resolve issues with applications so that a mark can proceed. Office Actions also prevent certain marks from registering when they do not comply with US trademark law, or they conflict with prior registrations and/or applications.
There are two categories of office actions: administrative, which address smaller issues that are usually easy to resolve, and substantive, which involve more significant legal issues as to the mark’s validity. Substantive office actions often involve claims that the proposed mark is confusingly similar to a registered mark or prior-filed application or is merely descriptive for goods or services. An attorney responds to an office action by filing an office action response. Should there be additional correspondence, filings may take the form of a request for reconsideration of the office action or an appeal to the TTAB.
This article will discuss various types of administrative and substantive office actions, the laws that an examining attorney will cite refusing a mark for registration, and when applicable, how to successfully respond to office actions.
Also, check out the Alt Legal Connect 2021 session, Spring into (Office) Action: Dealing with and Overcoming OA Refusals.
2(a) Immoral, Deceptive, or Scandalous Matter
A trademark application will be refused under §2(a) if it “[c]onsists of or comprises immoral, deceptive, or scandalous matter…” This provision encompasses many bases for refusal including curse words or other offensive language, deception relating to the geographic origin of goods (this is particularly relevant with wines or spirits), and disparaging or false connections with either living or dead persons. It is possible to overcome a §2(a) office action when there is a connection to a living or dead person but the effect is not disparaging or false. However, the owner must provide consent from the living person or the estate of a dead person.
While §2(a) refusals are often easy to spot and understand, there is some room for argument under the First Amendment to use certain terms that would ordinarily be prohibited. In a 2017 case before the US Supreme Court, members of an Asian-American rock band called The Slants argued that they had the right to register their band name as a trademark, despite the fact that the term “slants” has often been used as a disparaging, derogatory term to describe those of Asian descent. The Slants’ frontman, Simon Tam, explained that he and his bandmates wanted to reclaim the term and re-envision a term that was once a slur as a source of pride instead. The Supreme Court permitted The Slants to register their band name, holding that the disparagement clause under §2(a) violates first amendment rights.
2(b) U.S. or Other Flag
A trademark application will be refused under §2(b) if it contains the U.S. flag, any insignia or coat of arms of the United States, any symbol of any state or municipality of the United States, or any symbol of a foreign nation. The rationale is that no one should have the exclusive right to use a flag or any other jurisdictional insignia.
2(d) Likelihood of Confusion
Substantive office actions frequently cite §2(d), likelihood of confusion, as the reason for refusal. The USPTO will not register a mark that is confusingly similar to a registered mark or a pending application. The Federal Circuit set out thirteen factors (known as the “DuPont factors”) to determine whether confusion between one or more marks exists. Though the weight given to any factor may vary from case to case, key considerations include (1) the similarities of the marks as a whole considering their appearance, sound, connotation, and commercial impression, and (2) the similarities of the goods/services that are associated with the marks.
For example, consider the marks 31 US LIFE and US LIFE. The applicant filing for 31 US LIFE made a successful argument that the marks are not confusingly similar. The applicant argued that because U.S. Highway 31 is an actual highway, the mark had a different meaning and connotation from that of US LIFE, which had no association with highways and driving, and connoted the U.S. in general.
To overcome a §2(d) refusal, it is necessary to consider all of the relevant DuPont factors and argue that the applied-for mark is not confusingly similar to a registered mark. Oftentimes, a party facing a §2(d) refusal may seek a consent agreement. In a consent agreement, one party consents to another party’s registration of a similar or identical mark and explains why there is no likelihood of confusion between the marks. Strategically, it is best to first make an argument that confusion isn’t likely before seeking a consent agreement, as it will save money and time. In addition, consent agreements are only persuasive; the USPTO does not have to accept the consent agreement.
Check out our 3-part series with IP attorney M.J. Williams who describes three different scenarios and three distinct outcomes in overcoming §2(d) office actions:
Part I: Securing a Trademark Registration on the Principal Register
Part 2: Entering into a Consent Agreement with Parties Cited in Refusal
Part 3: Cancelling the Cited Mark and Seeking Registration on the Supplemental Register
2(e)(1) Merely Descriptive
A trademark application will be refused under §2(e)(1) if it is merely descriptive of goods or services. A descriptive mark may consist of a design, a word or phrase, or a combination thereof, and serves to describe a characteristic, feature, quality, or function of a good or service. One of the reasons registration of descriptive terms is prohibited is because the USPTO wants to prevent companies from unduly harming their competitors by having a monopoly over a descriptive term.
For example, the mark COLD AND CREAMY is descriptive for ice cream because it describes ice cream characteristics. An example of a descriptive design mark is a cue stick and ball for a billiard parlor.
It is possible to overcome a §2(e)(1) refusal by arguing that the mark is suggestive or fanciful. Alternatively, it may be possible to argue that the mark has acquired distinctiveness under §2(f) of the Trademark Act. Read more about §2(f) here.
2(e)(1) Deceptively Misdescriptive
A trademark application will be refused under §2(e)(1) if the mark is deceptively misdescriptive. A mark is deceptively misdescriptive if it falsely describes a characteristic, feature, quality, or function of a product or service, and if it is likely that consumers would believe in the misdescription and make a purchase based on this belief.
For example, LOVEE LAMB for seat covers, where the seat covers were not actually made from lambskin, is deceptively misdescriptive. This is because lambskin is used to make seat covers, which are more expensive and luxurious than seat covers made from other materials. Consumers are likely to believe that the LOVEE LAMB seat covers are made from lambskin and will make a purchase based on this belief. Overcoming a §2(e)(1) refusal can be accomplished by arguing that consumers are unlikely to believe in the misrepresentation.
2(e)(2) Merely Geographically Descriptive
A trademark application will be refused under §2(e)(2) if the mark is geographically descriptive. A mark is geographically descriptive if it describes a geographic location and the goods or services for which the applicant seeks registration originates in that geographic location. In addition, it must be plausible that consumers would believe the goods or services originate from the geographic location. To support a §2(e)(2) refusal, the examining attorney must prove that the mark’s primary meaning refers to the geographical location.
For example, VENICE for glassware from Venice is geographically descriptive. Another example is MANHATTAN for cookies baked in the borough of Manhattan in New York City.
It is possible to overcome a §2(e)(2) refusal by showing that the mark’s primary significance is not the geographic location described in the mark. Alternatively, if the mark has “acquired distinctiveness,” this may be grounds for overcoming the refusal. Read more about “acquired distinctiveness” here.
2(e)(3) Geographically Deceptively Misdescriptive
A trademark application will be refused under §2(e)(3) if the mark is geographically misdescriptive. A mark is geographically deceptively misdescriptive if: (1) the mark’s primary significance is a geographic location, (2) the goods or services for which the applicant seeks registration does not actually originate in that geographic location, (3) consumers are likely to believe in the misrepresentation, and (4) the misrepresentation is a material factor in their purchasing decisions.
The mark BUTTER LONDON is an example where the goods (cosmetics) were not actually associated with the city of London. The applicant successfully argued against a §2(e)(3) refusal by stating that the owner of the company was born in London and was inspired by his birth place; this showed that there was a strong association with London. It is also possible to overcome a §2(e)(3) refusal by arguing that consumers would not assume that the goods or services originate from the geographic location described in the mark.
2(e)(4) Primarily Merely a Surname
A trademark application will be refused under §2(e)(4) if the applied-for mark is primarily merely a surname, for example, KAHAN & WEISZ JEWELRY. An applicant cannot register a mark that is merely a surname on the Principal Register unless that trademark has “acquired distinctiveness.” Surnames are treated this way because the USPTO recognizes that more than one person may want to use a surname in association with goods or services. Prohibiting registration of surnames absent a showing of acquired distinctiveness delays the appropriation of exclusive rights in one name.
It is possible to overcome a §2(e)(4) refusal by claiming that the mark has acquired distinctiveness. Additionally, if applicable, it can be argued that the surname is a rare name or that it has another recognized meaning. Lastly, it is possible to overcome a §2(e)(4) refusal by adding a design element or a distinctive word to a mark. Learn more about how to respond to a surname refusal.
2(e)(5) Functional Matter
The Trademark Act allows for registration of trade dress which is the design of a product, the packaging in which a product is sold, the color of a product, or the flavor of a product. An example of trade dress is the fish shape of a GOLDFISH cracker. The shape of the cracker helps consumers identify and distinguish GOLDFISH from other products. However, the Trademark Act does not permit registration of trade dress that is merely functional. This prevents a company from having ownership over a useful product. A feature is functional as a matter of law if it is essential to the use or purpose of a product or if the feature affects the cost or quality of a product. For example, if a guitar has a particularly unique design, it could be protected as a trade dress. However, if the unique shape creates a distinct sound which is more balanced than an ordinary guitar, then the USPTO will consider the design functional and will refuse registration.
If the applied-for trade dress is merely functional, it will be refused under §2(e)(5). It is possible to overcome a §2(e)(5) refusal by providing evidence that the specific product feature doesn’t provide any useful advantages but is one of many equally feasible, efficient, and competitive designs. Evidence may include showing how a product feature has been promoted to help consumers identify the brand. Learn more about the difference between trade dress and design patents.
2(f) Acquired Distinctiveness
As discussed in prior sections, an office action refusal can be overcome if it can be shown that a mark has “acquired distinctiveness” pursuant to §2(f). Unlike the other sections previously discussed that are grounds for refusal, §2(f) permits non-distinctive marks (aka, descriptive marks) that have acquired distinctiveness to register on the Principal Register. If a mark has acquired distinctiveness, this means that the mark has significance to consumers and that they identify the mark as a source indicator of goods or services and not by its dictionary meaning.
Acquired distinctiveness can be demonstrated using evidence to demonstrate the following:
- Prior Registrations: Where a mark owner has an existing trademark registration for goods/services that are sufficiently similar to the goods/services in the pending trademark application. AND/OR
- Five Years’ Use: Where a mark owner has exclusively and continuously used a mark in commerce for five years. AND
- Other Evidence: Other types of evidence include long-term use of the mark, large scale expenditures in promoting and advertising goods/services with the mark, and declarations from consumers that they recognize the mark as a source indicator.
For more information on overcoming refusals and proving acquired distinctiveness, check out our article here.
The Controlled Substances Act
A trademark application that lists under its goods and/or services any products or services that fall under the jurisdiction of the Controlled Substances Act will be refused registration. Trademark law prohibits registration of marks that reference goods or services that a company cannot lawfully sell across state lines. Under the Controlled Substances Act, it is unlawful to manufacture, distribute, dispense, possess or sell any controlled substance. Regardless of state law, cannabis remains a controlled substance under federal law, and therefore registration of a mark for cannabis is prohibited. For more about registering trademarks related to cannabis, check out this article, this webinar, and the recorded content from Alt Legal Connect 2020.
Failure to Function: Overview
An applied-for mark will be refused when it fails to function as a trademark, which is to say that it does not identify the source of the goods or services. Often a failure to function refusal is based on a bad specimen because the specimen does not show the mark in use in commerce. In this case, the applicant may be able to overcome a failure-to-function refusal by submitting a new specimen showing the mark used on storefronts, in-store displays, websites, print and digital advertising, and actual products and merchandise. For more about specimen requirements, check out this article.
There are many other reasons why a mark may fail to function as a trademark. Check out this article about the various reasons why a mark may be cited for failure to function. Additionally, this article provides a complete overview of failure to function for merely informational matter, widely used messages, and religious text. Also, it is important to note that the USPTO is issuing failure to function refusals quite liberally, as discussed in this article.
The following sections discuss various reasons why marks may be refused for failure to function.
Failure to Function: Hashtags
Marks that contain hashtags rarely qualify for registration. Hashtags are used to identify or search for a word on social media sites. When an applied-for mark contains a hashtag symbol, it must be shown that the entire mark is used in commerce, not just as a hashtag for online social media. Consider the example below, where the applicant overcame a failure to function refusal by submitting a new specimen.
Original specimen (left); Re-submitted specimen (right)
The first image does not show the mark #BEATTHECRAVING in use in commerce. The second image shows that the mark functions like a trademark, because it is used with the restaurant services. For more information about social media trademarks, including those with hashtags, check out this webinar.
Failure to Function: Ornamental Use
Ornamental use means that the applied-for mark contains designs, symbols, words, or phrases that do not identify a source. For example, the phrase HAVE A NICE DAY printed across the front of a t-shirt is not a trademark because it does not identify the source of the goods; it is merely an ornamental phrase. The phrase does not act as a trademark because it does not indicate the business or entity that created the t-shirt.
It is possible to overcome an ornamental refusal by showing how the mark at issue clearly signifies an association with the mark owner’s business. One way to do this is by submitting a new specimen that shows the mark on a label or tag. The label or tag should be attached to the clothing goods, showing that the mark functions like a trademark. Learn more about ornamental refusals.
Failure to Function: Domain Names
It can be very challenging to register a trademark containing a generic top level domain (TLD), such as “.com,” “.edu,” and “.org”, as TLDs cannot act as a source identifier, and generally, cannot constitute a part of a registered mark unless they are part of the company name. Notably, the US Supreme Court took up this issue in 2020 and decided to allow Booking.com to register a trademark for BOOKING.COM. For more about the Booking.com case, watch the recording of this webinar. To use a TLD in a trademark, it must be shown that consumers perceive the mark as something more than an internet address.
After the Booking.com case, the USPTO issued an Examination Guide to address the procedures involved in examining trademark applications for generic terms combined with TLDs. The guide explains how a generic term will be assessed and outlines the types of evidence that will support consumer perception as a source identifier. Also, check out this article about filing generic.com trademark applications after the Booking.com case.
Failure to Function: Matter Used Solely as a Trade Name
An applied-for mark will be refused if it is solely used as a trade name; the Trademark Act does not provide for registration of trade names. A trade name is another term for “doing business as” (DBA) names. Trade names are often used by sole proprietors in conducting business in order to present a more professional image. This is different from a trademark, which is a word, phrase, design, or symbol that associates goods or services with a business. Trademarks, by definition, are usually more distinctive than trade names.
A company may use its trade name in its trademark. For example, The Coca-Cola Company is the business entity or trade name that sells the COCA-COLA brand beverage. However, if the trade name does not also function like a trademark, the examining attorney can refuse to register the mark on the grounds that it is merely a trade name. The examining attorney will consider the mark’s probable impact on consumers and how the mark is presented with goods and services when making this determination.
To overcome a claim that a mark is merely a trade name, it will be necessary to submit specimens showing how the mark functions like a trademark. The mark should be prominently displayed in use in commerce with goods and/or services. In addition, it must be argued that consumers use the mark to identify the owner’s brand and to distinguish it from others.
Failure to Function: Generic Marks
An applied-for mark will be refused if it is a generic term. A mark is generic if it uses words that the public understands as the common term for goods or services. For example, the term PILLOWS cannot achieve trademark protection for a company that produces pillows. If an examining attorney believes that a mark is generic, the proper basis for the refusal is §2(e)(1), that the mark is merely descriptive. In the case of applied-for marks that are apparently generic, the examining attorney will include a statement in the office action that the mark appears to be generic for the goods or services listed in the application.
It can be difficult, and almost impossible to overcome a refusal for a mark that is considered generic. It must be shown that the mark as a whole is not generic for goods or services. For example, the mark SOCIETY FOR REPRODUCTIVE MEDICINE for a reproductive medicine association was considered descriptive, not generic because the examining attorney failed to provide evidence that the public would understand the mark as a whole to be the common term for the association. While descriptive trademarks are inherently weaker than fanciful, arbitrary, or suggestive marks, they can still be placed on the Supplemental Register, unlike generic trademarks, which cannot be registered on either the Principal or Supplemental Registers.
Failure to Function: Prohibition on Plant Varietal
An applied-for mark will be refused if it is a varietal name which is used in a plant patent to identify the plant variety. A varietal name cannot function as a trademark if it is used in connection with its respective plant variety; otherwise it will be considered generic.
For example, a trademark applicant attempted to register the mark SANSIBAR for plant seeds. “Sansibar” is the varietal name for various plants, including corn, rapeseed, beets, rhododendron, and ryegrass. The applicant overcame a failure to function refusal by amending the identification of goods in the trademark application to state: “live plants and natural flowers thereof, excluding corn, rapeseed, beet, rhododendron, and ryegrass.” As a result, the mark was no longer considered generic.
Including a Disclaimer
When submitting a trademark application, the applicant may include a disclaimer, indicating that the mark contains a descriptive or generic term over which the applicant claims no exclusive rights. A disclaimer permits registration of a mark that is registrable as a whole, but contains matter that would not be registrable standing alone. For example, in STARBUCKS COFFEE, the word “coffee” was disclaimed. Starbucks has the exclusive right to use the mark as a whole, not the word “coffee” standing alone.
If the applicant does not include a disclaimer for a descriptive or generic term as part of the trademark application, the examining attorney may ask the applicant to submit a disclaimer.
The following format is preferred when disclaiming matter in a mark:
“No claim is made to the exclusive right to use ‘_____’ apart from the mark as shown.”
Failure to Identify Goods and Services
The examining attorney may require the applicant to amend the application if the goods or services in the application are not identified correctly. To prevent this, it is important to identify the goods/services in the application in a definite, clear, accurate, and concise manner. For products or services that do not have common names, it is best to use clear and succinct language to describe or explain them. The average person should be able to understand the identification.
For example, if an applicant described a mark’s goods as “blankets,” that would not be sufficient to identify the type of blanket on which the mark is used. This is because “Blankets” could mean fire blankets (Class 9), electric blankets for household purposes (Class 11), horse blankets (Class 18), or bed blankets (Class 24). Applicants must specifically identify the type of goods and services so that the application is filed in the correct class. Failure to do so will result in an office action where the examiner will request clarification of the specific goods and services with which the mark is used.