Three Common Objections to a Trademark Application by Kelley Way

Three Common Objections to a Trademark Application by Kelley WayLet’s welcome back monthly columnist Kelley Way as she shares with us “Three Common Objections to a Trademark Application.” Enjoy!

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Congratulations, you’ve filed your trademark application with the U.S. Patent and Trademark Office (USPTO)

You pat yourself on the back, and then turn your attention to other things while waiting for your application to process.

A few months later, you are surprised to receive an Office Action from the trademark examiner, saying they have objections to your trademark application. 

Your application cannot proceed until you have dealt with them. 

This situation is quite common. 

Even if you did everything correctly in the initial application, trademark examiners often find something in your application that they feel needs fixing. 

Common Objections to a Trademark Application

Here are three common objections to a trademark application:

  1. Request for a Disclaimer.

    When a trademark is registered, the owner can enforce its rights against anyone who uses all or part of that mark.

    But trademarks often include words commonly used in the industry (e.g., “financial services”).

    A disclaimer is a way to set limits on the owner’s enforcement rights so that others can continue to use these common words without worrying about getting into trouble with the trademark owner.

    So, in the case of “XYZ Financial Services,” the applicant (i.e., you) would disclaim “financial services.”

    This adjustment would still allow the applicant to go after anyone marketing themselves as “XYZ Financial Services,” but “ABC Financial Services” is free to go about their business.

  2. Amendment to Description/Language. 

    Sometimes the examiner doesn’t like the language an applicant uses to describe their picture mark or service.

    In these cases, they’ll ask the applicant to change the language to more accurately depict what the mark looks like or what the service is.

    Usually, they will include their own suggested language to use when amending the application.

  3. Refusal on the grounds of… 

    This is the most problematic Office Action since it means that the examiner doesn’t believe the mark meets the criteria for registration.

    There’s nothing that can be done in some cases, and the applicant will have to treat it as a learning experience for future trademarks.

    In most cases, though, it’s worth the effort to file a Response to Office Action, which very respectfully explains to the examiner why they’re wrong.

    You may want to hire a lawyer for this; not only will they know the best arguments to make, but a good lawyer can make arguing respectfully into an art form.

If you want to learn more about possible objections to a trademark application, you are welcome to email me at [email protected].

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ABOUT THE AUTHOR

Kelley Way

Kelley Way was born and raised in Walnut Creek, California. She graduated from UC Davis with a B.A. in English, followed by a Juris Doctorate. Kelley is a member of the California Bar, and an aspiring writer of young adult fantasy novels. More information at kawaylaw.com.

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