Trademark Office to Applicant: “No!”

You apply to register your trademark. A few months later, the Trademark Office sends you a “Non-Final Office Action.” It looks like they’re refusing to register your trademark.

What should you do now? That often depends on the reason for the refusal.

Refusal for “Confusing Similar”

If the Trademark Office refuses to register your trademark because it’s “confusingly similar” to another trademark your response needs to be like a legal brief. You’ll need make legal arguments (including case law and evidence) to convince the Trademark Office it’s wrong. It takes me about 10 or more hours to prepare this type of response.

Refusal for “Merely Descriptive” or “Generic”

If the Trademark Office refuses to register your trademark because it’s “merely descriptive” or “generic” you may be given the opportunity to register on the Supplemental Register. If that’s a choice, you might want to take it.

Other Reasons for Refusal

There are lots of other reasons for refusal. Here are just a few of them:

• Problems with your “drawing.”
• Problems with your “specimen.”
• You haven’t described your trademark correctly.
• You haven’t describe your products and services correctly.
• You put your products and services into too many or too few “international classes.”

Assuming you have a legitimate application, most of these other refusals can be easy to take care of. It usually takes me only an hour or two to put together a response to this type of office action.

An office action is never good news but, often, it’s a problem that can be solved.

Got ___________ ?

While drinking tea at a friend’s house, I noticed my mug asked the question: “Got Covenants?”

Hmmmm, I wondered, what would our friends at the California Fluid Milk Processor Advisory Board have to say about that?

Turns out the lawyers at Chadwick Washington have nothing to fear. There are hundreds of trademark registrations that take the form of the GOT MILK?® trademark. Here are a few of the more amusing ones:

• GOT POO? (for dog waste removal)
• GOT POOP? (also for dog waste removal, which what?)
• GOT MOHS?
• GOT RHOIDS?
• GOT BALLS? is registered for ice cubes, dog toys and meatballs.

I think GOT MILK? is a famous mark, which means no one can use anything even remotely like it even in a completely different field. So what’s going on here?

There are two things that prevent the Milk Board from relying on its fame to shut down all the other GOT _____?

Although the Milk Board started using GOT MILK? in December 1994, it didn’t get around to filing to register the mark until 2000. By that time, there were at least twenty other companies using GOT _____?

More importantly, it looks like the Milk Board wasn’t the first to use GOT _____?

• GOT A CASE OF THE SHORTS? was first used in 1990 and registered in May 1994, which is before the Milk Board started using GOT MILK?
• GOT FLIES? was first used in April 1994, which is also before the Milk Board’s use of GOT MILK?
• GOT LISTS? was first used in 1977

Put another way, despite GOT MILK?’s rise to fame, it just isn’t original enough to be meet the requirements for being legally treated as a famous trademark.