Attorney challenges when responding to office actions

Attorney challenges when responding to office actions

  • 08 June, 2024
  • Nyall Engfield

Trademark attorneys often face several challenges when responding to office actions issued by the United States Patent and Trademark Office (USPTO). An office action is an official letter sent by the USPTO identifying legal problems with a trademark application. The applicant must resolve all issues raised before the trademark can proceed to registration.

Some of the most common challenges include:

1. Likelihood of confusion refusals
One of the most frequent substantive issues raised in office actions is a likelihood of confusion refusal under Section 2(d) of the Lanham Act. The examining attorney will cite one or more existing registrations or prior pending applications that they believe are confusingly similar to the applicant's mark.

Overcoming this type of refusal requires conducting research and crafting legal arguments to distinguish the marks and goods/services, often citing case law. The applicant must show the marks create distinct commercial impressions or the goods/services are sufficiently unrelated that confusion is unlikely.[1][3]

Try TrademarKrafts Office Action Tool for a solid first draft.

2. Mere descriptiveness refusals
Marks that merely describe a quality, feature, function or characteristic of the goods/services are not immediately registrable on the Principal Register under Section 2(e). The examining attorney will refuse marks they consider merely descriptive.

Responding requires arguing the mark is suggestive, not merely descriptive, and requires imagination or thought to discern the nature of the goods/services. Alternatively, the applicant can claim acquired distinctiveness under Section 2(f) if the mark has become distinctive of their goods/services through substantially exclusive and continuous use in commerce.[3][4]

3. Improper specimens of use
For use-based applications, the applicant must submit an acceptable specimen showing the mark used in commerce in connection with the goods/services. If the specimen is not acceptable, such as if it appears to be digitally created or shows the mark used in an ornamental manner on the goods, the examining attorney will issue a refusal.

The applicant must then submit an substitute specimen that properly shows direct association between the mark and goods/services or make legal arguments as to the acceptability of the existing specimen.[4][5]

4. Identification of goods/services issues  
The identification of goods/services in the application must be specific, definite and accurate. Examining attorneys will issue office actions requiring amendments if the ID is overly broad or indefinite.

Properly crafting the ID is crucial to defining the scope of protection. Responding requires a careful balance of maintaining broad protection while satisfying the examining attorney's requirements for specificity and definiteness.[4][5]

5. Tight deadlines
Applicants have a non-extendable 3 month-deadline with a possible 3-month extension. This requires conducting research, gathering evidence and drafting substantive arguments under significant time pressure.[2][5]

Efficiently responding is crucial to avoid abandonment of the application. Requesting suspension or filing a petition to revive an abandoned application is costly and not guaranteed to succeed.

This is where software that automates the first draft of office action responses based on current case law can provide significant benefits and efficiencies for trademark attorneys. Such software allows attorneys to:

- Quickly generate a shell response with basic legal arguments and case citations for common refusal types like likelihood of confusion and mere descriptiveness. The attorney can then customize this draft to the specific facts.

- Easily compare the refused mark to cited registrations to identify distinguishing factors in the marks and goods/services. The software can pull key data points to include in the draft.

- Receive suggestions for alternative/revised identifications of goods/services based on ID drafting best practices and USPTO examining attorney preferences.

- Automatically format the response to comply with USPTO and TTAB filing requirements, saving time and avoiding potential refusals based on incorrect formatting.

- Access a database of prior office action responses and successful legal arguments to use as a starting point, rather than drafting from scratch.

By automating the first draft, attorneys can focus their time on higher-level strategy and customizing the arguments to the unique aspects of the case. It reduces time spent on repetitive drafting tasks.

This increases efficiency, allowing attorneys to respond more quickly and handle a higher volume of trademark applications. It also improves the quality and consistency of responses by leveraging prior successful arguments and current case law.

Importantly, automating the first draft still requires attorney review and customization. The software is a drafting aid, not a complete replacement for attorney analysis. The attorney must still carefully review the office action, identify all refusals and requirements that must be addressed, and revise the draft to make the strongest possible arguments.

However, starting with an auto-generated first draft based on current law allows attorneys to respond more efficiently and effectively to the challenges posed by office actions. By streamlining the drafting process, it frees up attorney time to focus on substantive trademark law issues and client counseling.


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