Trademark Office Action Response

So, you have received a trademark office action and need to file a response? Now what?

First off determine what type of office action it is. Is the Trademark Examiner requiring you to file a disclaimer, or are they saying your mark is descriptive, or is the Examiner arguing that there is likelihood of confusion with another mark?

If you only need to file disclaimer, then look at the word that the examiner is saying you need to disclaim. Is that word merely descriptive, laudatory, generic, geographic, a business type or a well-known symbol? If the word falls into one of these categories then a disclaimer is required. “A disclaimer is a statement that you include in your application to indicate that you do not claim exclusive rights to an unregistrable portion of your mark.”  For example, if your sell bottles and your mark contain the generic word “Bottles” you could not object to someone else using the word “Bottles” in their mark. The following disclaimer statement would be required to add to your application:

No claim is made to the exclusive right to use “______” apart from the mark as shown.

If the examiner is stating that there is likelihood of confusion with another mark, then you will need to look at the examiner’s arguments and the Registrant’s mark that the examiner is citing and see if the Examiner’s arguments are valid. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services which the mark is used with are so related that the consumers would mistakenly believe that they goods or services come from the same source. For example, T. Markey v. Tee Marqee, even though they are spelled differently they sound the same therefore there could be consumer confusion. If you have received this type of office action please contact us and we can walk you through whether a response is warranted.