The U.S. Patent and Trademark Office (USPTO) frequently issues Office Actions that may involve complex challenges such as a likelihood of confusion with prior trademarks or non-compliant specimens of use. These may also include more straightforward issues like improper descriptions of goods or services or formalities that do not meet the required standards.
The most frequent and challenging Office Action to overcome is one citing a likelihood of confusion between the applied-for trademark and an existing one. At our firm, we understand that responding to a likelihood of confusion Office Action can be daunting. The USPTO evaluates this based on the 13 factors established in the “DuPont” case, including the similarity of the marks, the nature and similarity of the goods or services, trade channels, the purchasing environment, the fame of the prior mark, the extent of actual confusion, and the possibility of market overlap, among others. We dedicate the necessary time and expertise to gather compelling evidence and craft persuasive arguments on your behalf. This may involve arguing that no likelihood of confusion exists or investigating the cited mark’s status and registration history to uncover evidence supporting our case.
Non-compliant specimens of use are another common reason for trademark refusals or Office Actions. A proper specimen must demonstrate how the trademark is presented to consumers in a real-world commercial setting, not merely a digitally added image. For example, if the image submitted to the USPTO shows a trademark that has been digitally added onto a product or service, rather than being genuinely used, this could be seen as misleading and may result in a refusal of the trademark registration. We have successfully guided many clients through these challenges by ensuring that all specimens meet the required standards.
Applicants have six months to respond to an Office Action. If the examiner accepts the response, the trademark will proceed to the publication stage. If the examiner maintains the refusal, a Final Office Action will be issued. At this stage, you have the option to continue responding within the six-month period, submitting further evidence to persuade the examiner, or to appeal the decision to the Trademark Trial and Appeal Board (TTAB). In some cases, both options can be pursued simultaneously. We are experienced in navigating these scenarios and will work with you to choose the best strategy for your situation.
Don’t hesitate to reach out to us at: ip@zyllaw.com. We’re here to guide you through every step of the trademark application process and ensure your brand’s protection in the U.S. market.