Refused based on an asserted likelihood of confusion with a prior registered mark, or a “potential” refusal citing a prior filed application that has not yet registered?
Received A USPTO Refusal?
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One of the most difficult problems trademark applicants encounter after they have filed a trademark application with the USPTO is the issuance of a refusal based on an asserted likelihood of confusion with a prior registered mark, or a “potential” refusal citing a prior filed application that has not yet registered.
Sometimes the examining attorney at the USPTO is clearly correct to refuse registration, for example, if you applied to register ZAPPY for a line of sweaters, and there is a prior registration for ZHAPPY for clothing, including sweatshirts. In this case it’s clear the marks sound similar, the goods are closely related and the overall commercial impressions of the two trademarks could result in consumers believing that the goods sold under ZAPPY emanate from the same source as the ZHAPPY goods.
But what if you applied to register ZAPPY NEW YORK RAGZ for your sweaters, and the examining attorney at the USPTO refused registration citing ZHAPPY HAUTE COUTURE? Don’t laugh—it could happen.
There is trademark doctrine that states that, although marks must be examined in their entireties, one portion of a mark may be dominant in creating the commercial impression of the mark. Additional doctrine holds that often the first portion of the mark is dominant, and other doctrine holds that descriptive terms are typically never dominant. Thus, although it would seem to most people that there is no confusing similarity between ZAPPY NEW YORK RAGZ for sweaters, and ZHAPPY HAUTE COUTURE for sweat shirts and other clothing items, a USPTO examining attorney would almost certainly issue a refusal of ZAPPY NEW YORK RAGZ citing the prior ZHAPPY HAUTE COUTURE mark.
This is because the USPTO examining attorney would first determine that the dominant terms in both marks are ZAPPY and ZHAPPY, since NEW YORK is geographically descriptive (assuming your business is located in NY or the clothing is manufactured or designed there) and RAGZ is descriptive of clothing because the fashion industry is also known as the rags trade and “ragz” is a deliberate misspelling of rags. Furthermore, the wording HAUTE COUTURE is descriptive because it refers to the fashion industry. Thus all the terms in the two marks other than ZAPPY and ZHAPPY are descriptive and weak terms. Worse, ZAPPY and ZHAPPY are both the first terms in each trademark and therefore under certain trademark cases, likely to be dominant.
You would be left having to argue that there is no likelihood of confusion because the marks must be examined in their entireties – as they are perceived by consumers in the marketplace – and when viewed in their entireties the two marks neither look alike, nor sound alike nor create similar overall commercial impressions. You would not be likely to prevail, unfortunately, and your application to register ZAPPY NEW YORK RAGZ would probably end up in the dustbin of history.
This illustrates one reason why it is so important to consult with an experienced trademark attorney when initially selecting your new trademark, and why it is critical to properly screen your new trademark – including having a comprehensive trademark search conducted — prior to using or applying to register any new trademark.
If you have received a USPTO refusal don’t panic. It may be possible to have the refusal withdrawn. Please contact us and give us the serial number of your trademark application. We will evaluate the refusal free of charge and give you an honest opinion as to whether we think there is a chance to persuade the USPTO examining attorney to withdraw the refusal. There is no obligation and our evaluation and consultation is free of charge.
An Office Action Response is your legal response to the Office Action sent to you by the United States Patent & Trademark Office (USPTO). We do all drafting of arguments and perform all legal research – no work is farmed out to paralegals.
All arguments in the Office Action Response will be crafted to specifically address the precise objections raised by the trademark examining attorney, thereby giving you the best chance of overcoming the objections raised and having the refusal withdrawn.
And in those situations where simply arguing against the USPTO Refusal does not seem like a promising strategy we’ll go the extra mile to find a creative solution that works for you.
There are several reasons why your trademark application may be refused.
Typical types of trademark refusals are:
- Likelihood of confusion refusal
- Merely descriptive refusal
- Other substantive refusals (including ornamental; fails to function as a trademark; primarily geographically descriptive; surname refusals)
- Non-substantive refusals and requests for additional information
You can benefit from having a trademark attorney on your side who can provide you with a free initial consultation that is also free from obligation. The trademark attorney you choose needs to be knowledgeable in dealing with Office Action Responses, providing you with honest advice and willing to draft all the arguments and perform all the legal research.
Need Assistance with your Trademark Application Refusal?
Thomas M. Wilentz, Attorney At Law, PPLC, is a New York Trademark Lawyer.
Thomas M. Wilentz is a graduate of Columbia Law School with honors (Harlan Fiske Stone Scholar). He is a member of the American Bar Association, the New York State Bar Association, the New York State Bar Association Intellectual Property Section, and a member in good standing of the bars of New York and New Jersey. Mr. Wilentz has assisted U.S. and international clients ranging from small companies to large multinational corporations in their applications for registration and other trademark matters. Learn More