Trademark Office Action Response to Trademark Refusal


Non-Substantive Trademark Refusal

While many USPTO Trademark applications do not receive a refusal, trademark refusals do occur. Even if you utilize a trademark attorney, applications can receive a notice of non-final office action by the USPTO for both non-substantive and substantive reasons. Baroody Law assists clients in responding to most trademark refusals. However, every case is different and some may not be taken at all if the likelihood of overcoming a rejection is very low. Baroody Law will never take your money to respond to something that cannot be successfully overcome, this would be unethical.

One reason a trademark may be refused is for non-substantive reasons. These are often relatively straightforward for a trademark lawyer to overcome. This refusal may occur because a disclaimer was not initially stated in the application but is now alleged to be needed, an individual's name was trademarked without having the appropriate documentation provided, a substitute specimen is needed, the entity of the owner needs to be clarified, or perhaps the goods and services need to be better defined.

If you received a USPTO notice of non-final office action letter with a refusal for reasons such as prior filed application having priority, likelihood of confusion, merely descriptive, geographically deceptively misdescriptive, or a failure to function as a trademark, you have a substantive refusal. It is not impossible to overcome a substantive refusal. However, without the assistance of a trademark attorney, this task can be even more difficult. In some instances, it may even be cheaper for you to rebrand rather than proceed with a response to office action argument as to why the uspto trademark examiner was incorrect in their non-final refusal findings. This is a discussion Baroody Law can have with you during an initial consult.

If you hire Baroody Law to conduct your initial trademark application and filing, a response to office action letter will be provided free of charge to non-substantive responses. Substantive refusals incur a similar fee for any client, regardless of whether or not they are existing or new. These refusals take time to conduct research and to create a valid argument (if an argument for overcoming a substantive refusal even exists). Baroody Law can response to the office action for you and monitor the status to determine if the response receives favorable, subsequent action or not. However, each case is different and must be evaluated accordingly to determine the best options for each individual's given situation.


To learn more about common trademark refusals, please review the Baroody Law FAQs page.