phoenixtrademarkattorney RESPONDING TO COMMON TRADEMARK OFFICE ACTION REFUSALS – Phoenix Trademark Attorney, Trademark Attorney Phoenix

Phoenix Trademark Attorney, Trademark Attorney Phoenix


After filing a trademark application, the Examining Attorney at the United States Patent and Trademark Office (USPTO) will often issue an Office Action before approving the mark for publication. Office Actions are intended to resolve issues with applications so that a mark can proceed. Office Actions also prevent certain marks from registering when they do not comply with US trademark law, or they conflict with prior registrations and/or applications.

There are two categories of office actions: 

(1) minor office actions, which address smaller issues that are usually easy to resolve, and

(2) substantive office actions, which involve more significant legal issues as to the mark’s validity. Substantive office actions often involve claims that the proposed mark is confusingly similar to a registered mark or prior-filed application or is merely descriptive for goods or services.  

This article will discuss various types of minor and substantive office actions, the laws that an examining attorney will cite refusing a mark for registration, and when applicable, how to successfully respond to office actions.


What Are the Most Common Types of Trademark Office Action Refusals and How Can I Overcome Them?


2(a) Immoral, Deceptive, or Scandalous Matter

A trademark application will be refused under §2(a) if it consists of or comprises immoral, deceptive, or scandalous matter. This provision encompasses many bases for refusal including curse words or other offensive language, deception relating to the geographic origin of goods, and disparaging or false connections with either living or dead persons. It is possible to overcome a §2(a) office action when there is a connection to a living or dead person, but the effect is not disparaging or false. However, the owner must provide consent from the living person or the estate of a dead person.

While §2(a) refusals are often easy to spot and understand, there is some room for argument under the First Amendment to use certain terms that would ordinarily be prohibited. In a 2017 case before the US Supreme Court, members of an Asian-American rock band called The Slants argued that they had the right to register their band name as a trademark despite the fact that the term “slants” has often been used as a disparaging, derogatory term to describe those of Asian descent. The Slants’ front man, Simon Tam, explained that he and his bandmates wanted to reclaim the term and re-envision a term that was once a slur as a source of pride instead. The Supreme Court permitted The Slants to register their band name, holding that the disparagement clause under §2(a) violates first amendment rights.


2(b) U.S. or Other Flag

A trademark application will be refused under §2(b) if it contains the U.S. flag, any insignia or coat of arms of the United States, any symbol of any state or municipality of the United States, or any symbol of a foreign nation. The rationale is that no one should have the exclusive right to use a flag or any other jurisdictional insignia.


2(c) Likelihood of Confusion

Substantive office actions frequently cite §2(d), likelihood of confusion, as the reason for refusal. The USPTO will not register a mark that is confusingly similar to a registered mark or a pending application. Courts have set out thirteen factors (known as the “DuPont factors”) to determine whether confusion between one or more marks exists. Though the weight given to any factor may vary from case to case, key considerations include (1) the similarities of the marks as a whole considering their appearance, sound, connotation, and commercial impression, and (2) the similarities of the goods/services that are associated with the marks.

For example, consider the trademarks 31 US LIFE and US LIFE. The applicant filing for 31 US LIFE made a successful argument that the trademarks are not confusingly similar. The applicant argued that because U.S. Highway 31 is an actual highway, the trademark had a different meaning and connotation from that of US LIFE, which had no association with highways and driving, and connoted the U.S. in general.

To overcome a §2(d) refusal, it is necessary to consider all of the relevant DuPont factors and argue that the applied-for mark is not confusingly similar to a registered trademark. Oftentimes, a party facing a §2(d) refusal may seek a consent agreement. In a consent agreement, one party consents to another party’s registration of a similar or identical trademark and explains why there is no likelihood of confusion between the trademarks. Strategically, it is best to first make an argument that confusion isn’t likely before seeking a consent agreement, as it will save money and time. In addition, consent agreements are only persuasive and the USPTO does not have to accept the consent agreement.


2(d)(1) Merely Descriptive

A trademark application will be refused under §2(e)(1) if it is merely descriptive of goods or services. A descriptive mark may consist of a design, a word or phrase, or a combination thereof, and serves to describe a characteristic, feature, quality, or function of a good or service. One of the reasons registrations of descriptive terms is prohibited is because the USPTO wants to prevent companies from unduly harming their competitors by having a monopoly over a descriptive term.

For example, the mark COLD AND CREAMY is descriptive for ice cream because it describes ice cream characteristics. An example of a descriptive design trademark is a cue stick and ball for a billiard parlor.

It is possible to overcome a §2(e)(1) refusal by arguing that the trademark is suggestive or fanciful. Alternatively, it may be possible to argue that the trademark has acquired distinctiveness under §2(f) of the Trademark Act. 


2(e)(1) Deceptively Misdescriptive

A trademark application will be refused under §2(e)(1) if the trademark is deceptively misdescriptive. A trademark is deceptively misdescriptive if it falsely describes a characteristic, feature, quality, or function of a product or service, and if it is likely that consumers would believe in the misdescription and make a purchase based on this belief.

For example, LOVEE LAMB for seat covers, where the seat covers were not actually made from lambskin, is deceptively misdescriptive. This is because lambskin is used to make seat covers, which are more expensive and luxurious than seat covers made from other materials. Consumers are likely to believe that the LOVEE LAMB seat covers are made from lambskin and will make a purchase based on this belief. Overcoming a §2(e)(1) refusal can be accomplished by arguing that consumers are unlikely to believe in the misrepresentation.


2(e)(2) Merely Geographically Descriptive

A trademark application will be refused under §2(e)(2) if the trademark is geographically descriptive. A trademark is geographically descriptive if it describes a geographic location and the goods or services for which the applicant seeks registration originates in that geographic location. In addition, it must be plausible that consumers would believe the goods or services originate from the geographic location. To support a §2(e)(2) refusal, the examining attorney must prove that the trademark’s primary meaning refers to the geographical location.

For example, VENICE for glassware from Venice is geographically descriptive. Another example is MANHATTAN for cookies baked in the borough of Manhattan in New York City.

It is possible to overcome a §2(e)(2) refusal by showing that the trademark’s primary significance is not the geographic location described in the trademark. Alternatively, if the trademark has “acquired distinctiveness,” this may be grounds for overcoming the refusal. 


2(e)(3) Primarily Merely a Surname

A trademark application will be refused under §2(e)(4) if the applied-for trademark is primarily merely a surname, for example, GOLDBERG JEWELRY. An applicant cannot register a mark that is merely a surname on the Principal Register unless that trademark has “acquired distinctiveness.” Surnames are treated this way because the USPTO recognizes that more than one person may want to use a surname in association with goods or services. Prohibiting registration of surnames absent a showing of acquired distinctiveness delays the appropriation of exclusive rights in one name.

It is possible to overcome a §2(e)(4) refusal by claiming that the trademark has acquired distinctiveness. Additionally, if applicable, it can be argued that the surname is a rare name or that it has another recognized meaning. Lastly, it is possible to overcome a §2(e)(4) refusal by adding a design element or a distinctive word to a trademark. 


2(f) Acquired Distinctiveness

As discussed in prior sections, an office action refusal can be overcome if it can be shown that a mark has “acquired distinctiveness” pursuant to §2(f). Unlike the other sections previously discussed that are grounds for refusal, §2(f) permits non-distinctive trademarks (aka, descriptive trademarks) that have acquired distinctiveness to register on the Principal Register. If a trademark has acquired distinctiveness, this means that the trademark has significance to consumers and that they identify the trademark as a source indicator of goods or services and not by its dictionary meaning.

Acquired distinctiveness can be demonstrated using evidence to demonstrate the following:

  1. Prior Registrations:  Where a trademark owner has an existing trademark registration for goods/services that are sufficiently similar to the goods/services in the pending trademark application. AND/OR
  2. Five Years’ Use: Where a trademark owner has exclusively and continuously used a trademark in commerce for five years. AND
  3. Other Evidence: Other types of evidence include long-term use of the mark, large scale expenditures in promoting and advertising goods/services with the trademark, and declarations from consumers that they recognize the trademark as a source indicator.


How Do I Respond to a Trademark Office Action?

To respond to an Office Action, you file a form on the USPTO website. This form allows you to choose how you wish to reply. Click on the following link for more information from the USPTO on how to respond:


While this form may seem simple, do not be deceived. Since you have a limited number of chances to contest the Office Action you either need to be 100% sure that you are responding correctly and completely or you need to secure the services of a trademark attorney who can complete the process and respond on your behalf. Because trademark office actions are time sensitive, please contact us as soon as possible if you have received one and need assistance.

Categories : Trademarks