Filing an appeal

Do you disagree with the examining attorney’s assessment of your application and still wish to fight for your trademark? If the refusal issued by the examiner was a second refusal or a final refusal, then you have the option to file an appeal with the Trademark Trial and Appeal Board if you so choose. An appeal must be filed and fees paid within six months from the date of the refusal. You will then have sixty days file an appeal brief. After doing so the examiner will then also have sixty days to file a response. It is important to note that during the appeal process the examiner may not raise any new refusals. After the examiner has issued his response you will have twenty days to respond. If at this point you are still refused and want to continue fighting, then a request for reconsideration may be filed. This must be done within one month. If success is not found here, then the only option is to proceed to federal court.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a Disclaimer?

It is very common for Office Actions from the USPTO to contain a requirement for a disclaimer. A disclaimer is a part of a trademark which you are unable to register. This does not mean that your mark will not register or be protected, nor does it mean the disclaimed portions will be ignored when comparing your mark to those which may conflict with it. It only means that a portion of what you are trying to claim will only be protected as it relates to your entire mark. In other words, your exclusive rights for the disclaimed portion only apply to the context of the entire mark and not by itself. This will not impact your rights as far as your entire mark is concerned. Disclaimers are usually necessary for generic words, descriptive terms, or ornamental designs. Do not fret if the Office Action issued by the examiner has a disclaimer requirement. Disclaiming necessary parts of your trademark is very routine procedure and many registered marks have parts which are disclaimed.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Overcoming Rejections

The specific strategies to overcome the many different grounds for rejection vary. One good place to start can be to call and speak with the examiner that issued the Office Action against your application. Sometimes minor issues can even be resolved this way. Even if they cannot be solved with a phone call, hopefully the examiner can give you a better sense as to what the issues are and how to proceed. Many applicants elect to hire a licensed attorneys specializing in intellectual property. The issues contained in Office Actions generally require attention to specific details and instructions pertinent to the application itself (procedural issues) or a thoughtful well-crafted response to issues with the mark itself (substantive). In either case having an experienced private attorney review your Office Action and file your response can help prevent future issues and delays. Do not risk losing your trademark by trying to respond when you do not understand the issues or what the examiner is looking for.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.