Responding To Rejections Of Trademark Applications

Source: CtR Intellectual Property Co.

The U.S. Patent and Trademark Office (USPTO) can reject trademark applications on several grounds. The trademark applicant must know the best way to respond to the rejection – and it’s definitely not writing a scathing letter disparaging the USPTO examiner’s qualifications – to get a favorable outcome in the end. Here are things that you need to know about it.

Action Letters

The USPTO examiners write three types of action letters, the term used for U.S. trademark application rejections.

• Technical rejections typically involve procedural oversights or minor matters that can easily be resolved by the appropriate amendments.
• Substantive rejections usually involve more complicated matters, such as the likelihood of confusion, generic claim, and descriptive mark, which are more challenging to resolve. In most cases, the professional assistance of an experienced patent lawyer is recommended, if not a must, to get approval.
• Final rejections are written and issued only after you have failed to respond to either of the two abovementioned rejections at least once.

If you receive either a technical or a substantive rejection in the mail or by telephone, you shouldn’t lose hope as the examining attorney will give you at least one chance to answer. You will find that these action letters are common so you’re not being singled out, discriminated against, or targeted for exclusion by the USPTO.

Prescription Period

The action letter always specifies the number of months that you should respond to the issues being raised as the reasons for rejection. In general, the USPTO gives applicants six months to make the appropriate response to an action letter.

If you don’t respond within the prescribed period, you run the risk of having your application considered as abandoned by the USPTO. In case of abandonment, you have to return to square one of the application process if you still want the trademark registration.

The bottom line: Always send your response to an action letter as soon as possible. But avoid rushing your response since you don’t want to run the risk of yet another rejection call or letter for a minor matter. You have to double check that, indeed, your response corresponds to the grounds for rejection.

Choices to Make

You can choose from these three choices when responding to the action letter:

• Make a response on your own
• Hire a trademark attorney to handle the response
• Abandon your application

If you respond to the action letter yourself, you have to make sure that you can actually handle it well – and it’s usually the case for technical rejections. But if you can’t handle the complexity of the grounds for rejection, you shouldn’t try to do so unless you’re willing to risk final rejection.  Your trademark lawyer’s services may seem expensive at first but when you consider the benefits, you will likely be willing to pay for these services in the future.

Source: CtR Intellectual Property Co.