Trademark Practice


CLE Approved

Spring into (Office) Action: Dealing with and Overcoming OA Refusals

3:00 PM - 4:30 PM ET

A strong response to a substantive Office Action from the USPTO requires several elements, including effective writing, compelling evidence, and citation of relevant case law. This discussion will tackle these elements as they relate to some of the most common refusals: likelihood of confusion, descriptiveness, and failure to function. The panel will discuss these types of office actions, demonstrate how to effectively respond to them, and provide specific examples of successful responses. Topics will include:

  • Case law and TMEP research tips
  • Why the number of failure to function refusals is growing
  • How to draft applications to minimize office action refusals


Erik Pelton

Founder of Erik M. Pelton & Associates

Kelu Sullivan

Partner at Kelly IP

Ruky Tijani

Founder of Firm for the Culture