1 / 2

Trademark Prosecution

A Guide to Filing & Prosecuting a Mark

A trademark application is examined by a U.S.PTO examiner at the trademark office. If for any reason there are any discrepancies with an application or more importantly, if the trademark examiner rejects the application on the grounds of likelihood of confusion with a registered mark or on the grounds of descriptiveness, the U.S.PTO examiner issues an office action rejecting the trademark and provides an opportunity to the trademark applicant to submit an appropriate response within the time period specified in the office action, usually a period of 6 months.

IP Procure’ trademark attorney has experience in filing of these trademark responses.

Where an application is not allowed by the U.S.PTO examiner, our firm informs the applicant immediately of the pending office action. As soon as we receive the applicant’s approval to proceed with filing a response to the office action, we work with the applicant to draft an appropriate response to the office action. In order to ensure we respond to all of the trademark examiner’s issues, we follow up with the examiner to understand the reasons for the rejection. IP Procure conducts its own market surveys and researches U.S.PTO’s Manuel of Trademark Examining Procedures (MTEP) and federal case studies to submit a well researched and convincing argument in support of the registration. We keep you updated through all the stages of research and drafting the response.

There are several kinds of possible rejections which we advise the applicant on completion of the trademark search.

Kinds of Trademark rejections
The most common sort of refusal is a rejection based on a likelihood of confusion, mistake or deception.

15 U.S.C. §1052 states,

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive….”

On receipt of an application for registration of a mark, the examining U.S.PTO attorney conducts a search of the U.S.PTO database to determine whether the mark applied for resembles a registered or pending mark as to be likely to cause confusion or mistake when used in connection with goods or services that have been identified in the application. In the case of re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals opined in an ex parte examination that “the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services.” The test however is not whether the goods or services are actually confused but that there is a likelihood of confusion to the source of the goods.

The second most common type of refusal is a rejection based on the mark being generic in nature. To illustrate, in re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007), LAWYERS.COM was considered a generic term as the service was described as, “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”. The applicant for the registration of a mark must therefore avoid choosing a mark which is considered generic or common to describe the goods or services.

Other refusals arise under 15 U.S.C. §1052, which provides that a trademark may be refused if the mark:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant..”

For example, several federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals and characters adopted by the United States government or particular national and international organizations. Congress has created statutes that grant exclusive rights to use certain designations to federally created private corporations and organizations. Violation of some of these statutes may be a criminal offense for example, 18 U.S.C. §§705 (regarding badges, medals, emblems or other insignia of veterans’ organizations); 706 (“Red Cross,” “Geneva Cross,” and emblem of Greek red cross), etc.

Similarly, registration of a mark may be refused if the mark ”consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” 15 U.S.C. §1052. The purpose of this is to protect the right of privacy of such individual.

In addition to the above, a mark may be refused simply because it is descriptive of the goods or services of the applicant or deceptively misdescriptive. In Re MBNA America Bank, N.A., No. 02-1558 (Fed Cir. August 15, 2003), the Federal Circuit Court of Appeals explained that:

“A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. Nett Designs, 236 F.3d at 1341. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, “if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods [or services], then the mark is suggestive.” The most inherently distinctive marks are arbitrary; they do not even suggest any of the qualities or characteristics of the goods or services.”

The U.S.PTO has advised applicants that “the examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services” and “a mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.”

On the other hand, a mark may also be rejected on the ground that it is geographically descriptive of or deceptively geographically misdescriptive of the applicant’s goods or services. This means that a mark would be rejected if, the primary significance of the mark is geographic; purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and the mark identifies the geographic origin of the goods or services or geographically deceptively misdescriptive if, the goods or services do not originate in the place identified in the mark.

The U.S.PTO may also refuse to register a mark that is used solely as a trade name. A trade name refers to the name of a business or company. Under the Trademark Act, a trade name is defined as any name used by a person to identify his or her business or vocation. The Act does not provide for registration of a trade name. In addition, the Act also does not provide for the registration of merely a surname.

Further, a mark that is merely ornamental or decorative in nature and does not identify or distinguish the Applicant’s goods does not function as a trademark as required by §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127