The Process

Then, the trademark office assigns a specialist (examiner) who reviews your application, conducts a trademark search, and arrives at a conclusion.

They can approve your application as it is or issue an Office Action (a formal letter describing a potential issue with your application) to which you must respond in a specific time to keep your application active.

This Office Action is not a death sentence. You can either fix or fight the issue if you know how. Many potential problems to avoid are subjective and beyond anyone’s control.

The Reasons

What are the three most common reasons for Office Actions and application denial?

Number One:

• List of Goods and Services (Nice Classification)

• Logo Filing Issues

• Appropriate US Representation

These issues are either problems with the application or the trademark itself. Usually, problems with the application are easier to fix (if you understand the process and have sufficient knowledge). The most common is your list of goods and services. 

You must assign the appropriate Nice Classifications for each of the goods and services under your trademark. If your examiner feels that your trademark belongs in more classes, you must pay additional government fees for the extra classes.

The description must be sufficiently specific and clear regarding your monopoly claims. Generally, a reasonable response to an Office Action can overcome objections.

When seeking trademark protection for your logo, you must describe it in words and specify if you want to claim color as a feature. Examiners frequently file Office Actions to correct deficiencies in this area.

If you are not a US resident, or the company is not US registered, you must have a US attorney of record. Otherwise, you will receive an office action for the violation.

Number Two:

• Application Does Not Distinguish Your Goods and Services from Others

• Your Trademark Is Ornamental and Not Descriptive

• The Filing Is for a Functional Feature and Not to Distinguish the Brand

  
  

A trademark’s purpose is to distinguish your brand from others offering similar products and services. The examiner will refuse your application if it does not reach this threshold. 

You cannot trademark something that does not set you apart, like “Made in the USA,” “Drive Safely,” or the TM symbol.

A variation of this is the ornamental trademark, attempting to register an image or phrase of artistic or literary value but is not an indicator of your brand.

Similarly, functional trademarks identify a functioning feature of your product and not the brand that allows the market to identify the product.

And finally, is the descriptiveness objection when the examiner feels your mark merely indicates the quality, characteristics, or features of your product, For example, “5G Phone”, “Color Printer,” or “Timely Accounting.”

Descriptive trademarks are problematic because if you can trademark “Timely Accounting,” no one else could make that claim, which would be unfair.

About the Supplemental Register

The US has a Supplemental Register for descriptive trademarks. While you can maintain your monopoly, there is no guarantee of successfully countering trademark infringement. It does, however, preclude future applications.

You can try for the supplemental register if you actively use your mark in commerce. If not, you need to argue your trademark is not clearly descriptive or has acquired secondary meaning.

The arguments regarding descriptive trademarks are incredibly complex, and anyone without legal training or other qualifications is unlikely to succeed in these efforts.

Descriptive trademarks are difficult to register because of increasing volume. In Canada, over 50,000 applications arrive each year, over 600,000 in the US, and over 7 million trademark applications each year in China.

Number Three

• Your trademark is confusingly similar to a previously applied-four registered mark.

If your trademark is deemed confusingly similar, you can argue it is not and provide supporting data.

Limit your list of goods and services that overlap, or propose a trademark coexistence agreement with the other party. Or begin opposition proceedings against previously filed and pending applications or cancellation proceedings against registered marks.

These are the three main reasons trademark applications fail. Trademark Factory® will take on this challenge for a flat fee and successfully register your trademark with our 100% money-back guarantee.