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.
