Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us

 


Saving Your Trademark Application (or Registration filing) from a Final Refusal


Did your final refusal include: PRO SE APPLICANT MAY WISH TO SEEK COUNSEL?

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.

 

Putting together a ‘PROPER RESPONSE TO FINAL REFUSAL’ involves more than rehashing the same arguments that were presented in response to a nonfinal refusal.


A proper response means that a trademark applicant must respond within six months of the date of issuance of a final Office action (final refusal) or the application will be abandoned.  An applicant may respond by providing one or both of the following:

(1)       a response (Request for Reconsideration) filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.


Final refusals can have one final issue or many final issues. Examples of final refusal issues include (but are limited to):

  • FINAL – LIKELIHOOD OF CONFUSION – SECTION 2(d) REFUSAL (most common)
  • FINAL - DRAWING AMENDMENT NOT ACCEPTABLE
  • FINAL - REQUEST TO CHANGE OWNER NAME – NO ASSIGNMENT FILED/RECORDED – No Information Provided Regarding Change
  • Amended ID is beyond the scope of the original
  • Section 2(e)(1) Refusal - Merely Descriptive
  • Drawing Unacceptable
  • TRADEMARK ACT SECTION 1 and 45 REFUSAL
  • Requirement to amend the classification of the services
  • SPECIMEN OMITTED
  • Requirement to amend color claim
  • Refusal – Applied-for Mark is Generic
  • The applicant has improperly asserted both use of the mark in commerce under Section 1(a) and a bone fide intent to use the mark in commerce under Section 1(b) for identical goods.
  • The applicant failed to provide his national citizenship
  • FINAL REQUIREMENT – ACCEPTABLE DESCRIPTION OF THE MARK
  • SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
  • FINAL REQUIREMENT FOR CLASS XX – ACCEPTABLE IDENTIFICATION OF GOODS
  • Section 2(e)(4) Refusal – Primarily Merely A Surname
  • Disclaimer Requirement
  • SECTIONS 1, 2 AND 45 REFUSAL – MERELY ORNAMENTAL
  • Specimen Does Not Show Use of Mark with Specified Services
  • UNVERIFIED SPECIMEN


A Do It Yourself approach on a final refusal may not be a good investment. If the mark is valuable and the application goes abandoned, there may be someone else waiting to move forward to take your place. Registration has a lot of benefits.


Not Just Patents ® Legal Services answers refusals for any of our application clients as part of the service at no extra charge. We also answer refusals for clients who have used other services or filed their own applications at a reasonable flat fee per classification.


Not every refusal can be overcome but many applications go abandoned due to problems that are fixable if the fix is done at or before the right time during the prosecution of a trademark application.




Comparison of USPTO Principal Registration, Supplemental Registration and Common Law rights (no registration)

Trademark Rights

Principal Register

Supplemental

Register

Common Law

Bring infringement suit in federal court based on the federal registration

YES

YES

NO

Can be used by trademark examiner against future applications of confusing similar marks

YES

YES

NO

Mark is easy to find for search reports

YES

YES

NO

Owner can use ® to symbolize federal registration

YES

YES

NO

Incontestability of mark after 5 years

YES

NO

NO

Statutory presumption of validity

YES

NO

NO

Statutory presumption of ownership

YES

NO

NO

Statutory presumption of distinctiveness or inherently distinctive

YES

NO

NO

Statutory presumption of exclusive right to use the mark in commerce

YES

NO

NO

Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods

YES

NO

NO

Ability to bring federal criminal charges against traffickers in counterfeits

YES

NO

NO

Use of the U.S. registration as a basis to obtain registration in foreign countries

YES

NO

NO


 See Why Not Just Patents? if you have already applied and been refused.


FinalRefusal.com


Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590

WP@NJP.legal