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Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal Connect Session Summary: Spring into (Office) Action: Dealing with and Overcoming OA Refusals

Alt Legal Team | September 14, 2021
5 min read

On Tuesday, September 14, Erik Pelton, Founder of Erik M. Pelton & Associates, Kelu Sullivan, Partner at Kelly IP, and Ruky Tijani, Founder of Firm for the Culture presented the session, “Spring into (Office) Action: Dealing with and Overcoming OA Refusals.” The presenters discussed some of the most common types of office actions including likelihood of confusion, descriptiveness, and failure to function, and demonstrated how to effectively respond to them while providing specific examples of successful responses.

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Failure to Function Refusals

Ruky opened the conversation by discussing failure to function refusals – describing these types of refusals, successful arguments against failure to function, and providing tips to prevent and/or overcome failure to function refusals. Ruky stated her position against these types of refusals, “[The] Failure to Function doctrine is incoherent and it lacks clarity.” She noted that the USPTO has provided little criteria to define failure to function and has been inconsistent on what it truly means when a mark fails to function”

Ruky incorporated pop culture examples in the discussion, one being Lebron James’ application to register TACO TUESDAY in connection with an online video show and Megan Thee Stallion’s application for HOT GIRL SUMMER. James’ application was ultimately denied in an office action response over seventy pages long, stating the mark had failed to function and that the phrase “Taco Tuesday” was well-known prior to James. The response also cited approximately eleven different sources to demonstrate that consumers were using the “Taco Tuesday” phrase while not associating it with the basketball star. James then abandoned the application in 2020. Rapper Megan Thee Stallion (whose real name is Megan Pete) applied to register the mark HOT GIRL SUMMER in reference to her 2019 song “Hot Girl Summer” (ft. Nicki Minaj and Ty Dolla $ign). Although Pete initially received an office action refusal with citations from several different sources, Pete’s application was issued a notice of allowance as of 2021.

Ruky went on to explain several arguments that may be used to overcome a failure to function refusal:

  • The mark is not actually commonplace in the particular industry of applicant’s goods and services.
  • The mark is distinctly different from the commonplace phrase.
  • Several similar marks were registered; applicant’s mark should be registered as well.
  • All marks point to the applicant, contrary evidence notwithstanding
    • Ruky notes that Pete was successful in applying for the HOT GIRL SUMMER mark using this argument.

Ruky concluded her portion of the discussion by leaving tips to prevent office action refusals:

  • Google shopping tab is your best friend
  • Research trending hashtags
  • Research registered and pending marks/save certificates
  • Count the EA’s evidence
  • Narrow your niche
  • Grab those similar registrations to support your argument
  • 2(d) Likelihood of Confusion Refusals

Kelu transitioned to the next portion of the discussion, §2(d) Likelihood of Confusion refusals, citing 15 U.S.C. §1 052(d)’s definition that §2(d) of the Trademark Act bars registration of an applied-for mark that “so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another… as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake or to deceive.”  Kelu recommended through the following checklist when trying to overcome a §2(d) preliminary refusal:

  • Check the status of the cited registration
  • Check to see if the registrant is still using the mark
  • Cited registration issued based on suspicious specimen
  • Does your client have priority over the cited registration?
  • Check prosecution history – arguments to overcome refusal
  • Amend the description of goods/services to overcome refusal

Kelu mentioned, “If a cited registration is in the grace period, you can ask the examiner to suspend the prosecution of your application pending the outcome of whether or not that registration will be renewed.” By suspending the prosecution of the application, this gives applicants a chance to see what will happen with the cited registration and whether or not the applicant will want to make an argument or limit the goods and services.

The USPTO considers thirteen factors, also known as the DuPont Factors, when considering Likelihood of Confusion. The most common factors considered in a response are: similarity/dissimilarity of the marks, similarity/dissimilarity of the nature of the goods and services, similarity/dissimilarity of trade channels, conditions of purchase, and fame of prior mark. Kelu also provided examples of substantive arguments for overcoming a §2(d) refusal:

  • The cited mark is inherently or relatively weak
    • Meaning as applied to goods and services
    • Third-party registrations
  • The parties’ marks are dissimilar in appearance, sound, connotation, and/or commercial impression
  • The parties’ goods and/or services are dissimilar
    • Relatedness of the goods and/or purchasers
    • Dissimilarity of purchasers and potential purchasers
    • Sophisticated purchasers
    • Differences in trade channels

Kelu uses Bentley as a successful example of overcoming a §2(d) refusal – the vehicle company had wanted to file their name under Class 3 and Class 21, but was met with three citations of other parties with a similar name under those classes. However, Bentley stated that they would only sell goods under those classes in authorized vehicle dealers. The difference in trade channels allowed Bentley to overcome the refusal.

Descriptiveness Refusals

Erik completed the panel discussion by talking about §2(e)(1) refusals. Erik started by paraphrasing 15 U.S.C.  §1052(e)(1), “No trademark shall be refused if it consists of a mark when used on or in connection with goods and is merely descriptive.”  Erik told the audience that before he begins thinking of a response to argue against the descriptiveness refusal, he considers other options, “There really are four main options when you get a descriptiveness refusal. One is to argue in response, one is to claim acquired distinctiveness under §2(f) to try to overcome the descriptiveness… Amending to the Supplemental Register… But probably overlooked is the option to let it go and do nothing.”

Erik suggested that if an applicant believes they haven’t used their mark long enough to claim acquired distinctiveness, it may be best to let the application go as there is no record of failure and may be harder for someone else to assert the same or related mark against the applicant. Erik expressed his views on this option, “I personally think that most times, maybe even 9 times out of 10, it’s probably better than nothing to have something on the register, even if it is on the Supplemental Register because when you’re in the register, the client’s mark is in that database all the time.” Although amending to the Supplemental Register may be considered admission of a weak mark, it does not restrict the applicant from returning later to try and seek acquired distinctiveness.

Erik wrapped up the panel by reminding the audience of the range of options and strategies for responding to a descriptiveness refusal, providing as much evidence and information as possible, and applying the particular facts to the arguments and evidence.

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