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Terminology & Resources

Explanation of Terms

  • Office Action

  • Final Refusal

  • Co-Existence Agreement

  • Cancellation Action

  • Concurrent Use Proceedings

  • Opposition Proceeding

  • Drawing Requirements

  • Intent-to-Use Application

    • Statement of Use

    • Notice of Allowance

    • Request to Divide

  • Declaration of Use and/or Excusable Nonuse

  • Declaration of Incontestability

Office Action

A significant percentage (on average 70%, and more than 90% for Madrid Filings designating the United States) of trademark applications to the USPTO are blocked by what are known as “Office Actions.” These are official letters issued by the Examining Attorney advising that the applied-for trademark is being blocked for any number of reasons, for example:

  • The evidence of use (called a “specimen”) may be found to be insufficient

  • The mark may not be sufficiently distinctive

  • The mark may be too similar to an already registered mark or a prior-filed application in the same class of goods and services

  • The mark may be too similar to an already registered mark in a different class of goods and services if the goods and services of the registrant are “related” to the goods and services for which the applicant seeks registration

  • The Examining Attorney requests information, such as a clarification of ownership, or asks for a disclaimer (e.g., that a particular word in a mark cannot be claimed apart from the entire mark itself), or a better graphic description.

Some Office Actions are easy to overcome, while other Office Actions may require technical amendments to the application or submissions of arguments with extensive factual evidence and legal argumentation.

Our inclusion of responses to Office Actions in our fixed fee can provide a significant savings to our clients. Some of our clients learn the hard way by using discount services that charge by the hour to respond to Office Actions or offer no support for Office Actions at all, thereby dooming the application. Using a “discount” service, it is not unusual for someone to spend two to three thousand dollars between the application and Office Actions, only to have their trademark application refused in the end. (To be fair, some trademark applications do fail to proceed to registration.)

When the USPTO issues an Office Action, it allows the Applicant up to six months to submit a response. Depending upon the nature of the Office Action, the Applicant may want to respond quickly or to wait the full six months. The Office Action process can occur several times before the application is either approved or definitively denied.

Appeals From Final Refusals

At any time during the trademark application process, Examining Attorneys may issue a “Final Refusal” if they feel that the Office Actions cannot be overcome or remedied by amendment. Appeals of Final Refusals to the Trademark Trial and Appeal Board meet with only very limited success and are not generally recommended.

Coexistence Agreements

On occasion, an Examining Attorney will issue a Final Refusal that can be overcome by contacting the owner of the “blocking” registration and asking whether it is possible to enter into an agreement (generally, a “Coexistence Agreement and Consent to Register”) pursuant to which the owner agrees to allow your mark to be registered in exchange for promises to limit the use of your mark, for example, to certain goods or services, or always in conjunction with the use of your “house” mark, or not to expand the applied-for use.

Cancellation Actions

Applicants may sometimes face a situation where the Examining Attorney issues a Final Refusal on the basis of an existing registration but the Applicant has discovered that the registered mark is no longer in use or that there is some other basis to attack the registration. This is done by filing a Cancellation Action, which asks the USPTO to cancel the blocking registration on permitted legal grounds.

Concurrent Use Proceedings

Final Refusals can also occasionally be overcome in Concurrent Use Proceedings where the applicant has applied to register the same or similar mark as that of a registrant (i.e., someone already holding a registration), and where both parties limit the use of their marks to distinct geographical areas. Concurrent Use Proceedings may be filed directly or by converting an existing application to a concurrent use application. To succeed in such a proceeding, the applicant needs to prove to the USPTO’s Trademark Trial and Appeal Board, among other things, that (a) it was either using the mark in commerce prior to the date on which that the earlier registrant filed its application for registration or that the registrant consents to the use of the mark by the applicant (who is referred to as the “junior user”); and (b) concurrent use of the marks must not result in a likelihood of confusion. (The latter may also be overcome, in part, by an agreement between the senior and junior users, although the TTAB has the last word.)

Opposition Proceedings

Opposition proceedings occur when a third party (generally the owner of a similar mark) objects to the registration of the applicant’s mark. A majority of these proceedings are settled by the parties agreeing to a coexistence agreement.

Opposition proceedings often come as a surprise, because they occur only after the examining attorney in the USPTO has determined that there is no likelihood of confusion between the applicant’s mark and an already registered one. Holders of registered marks, however, may be very protective – and sometimes over-protective – of their territories. As one of many examples, a client of ours sought to register the mark ADECO for “furniture.” The application was opposed by the Adecco Group AG, a company that owns the mark ADECCO for employment agency services, employment and behavioral testing, computer software, workshops, and computer consulting – nothing at all to do with furniture. Not long after litigation commenced, however, Adecco Group reasonably agreed to settle the case and allow our client to register ADECO for furniture with the description of goods stating “Furniture; none of the aforesaid goods being related to the provision of human resources or staffing.”

Drawing Requirements

There are two types of “drawings,” which is the parlance used by the USPTO for the form in which a mark must be submitted for registration. The “Standard Character” Drawing consists simply of words (i.e., without any graphics or special fonts or color) (a “Word Mark”). The “Special Form” Drawings applies to any mark that is specified to be in a particular font or that contains some graphic element or depiction or color.

Because we will need to prepare the drawing page to meet the specifications of the USPTO, for all marks other than Word Marks, you must provide us with a hi-resolution JPG — one of sufficient quality that will allow us, if necessary, to manipulate it so that it is conforming.

  1. When color is not claimed as a feature of the mark, the drawing must appear in pure black-and-white; no color and no grey are permitted. When color is claimed as a feature, the drawing must show the mark in color and the applicant must name the color(s), describe where each color appears in the mark, and state that the colors are a feature of the mark. Before you decide to file for a color mark, send us a specimen so that we can advise you regarding the merits and disadvantages of filing for a color mark.

  2. Every line and letter must be clear — not too fine or too close together.

  3. The use of gray to indicate shading is unacceptable unless it is a specific part of the mark.

  4. The JPG resolution should be 300 dpi, and the preferred size of the area where the mark is displayed is 2-1/2 inches (6.1 cm) square. In any event, it should not be larger than 4 inches (10.1 cm.) square or be more than 5 Mb in size. (As long as the JPG is high resolution, we can usually manipulate it to conform with the USPTO requirements.)

  5. If the re-sizing of the mark to the preferred size renders any details illegible or unclear, you may provide a statement describing the mark and these details, which statement will be included in your application.

  6. Do not include a ™ or ℠ symbol or a ® in the drawing. (“TM” indicates that the user is making a claim to use the mark as a trademark, and “SM” indicates that the user is making a claim to use the mark as a service mark. The ® can only be used once a mark is registered, and use of the ® prior to registration can result in a refusal by the USPTO to register your trademark.

Intent-To-Use Applications

Intent-to-use applications may be filed where the client intends to use a mark in the near future, where that intent is evidenced by business plans, marketing research, corporate meetings, and/or other documents in existence at the time of filing the application. An intent-to-use application allows the applicant to claim the date of the application as the “priority date,” even if use of the mark doesn’t begin until later (up to approximately four years). Thus, if another applicant comes along and wants to register the same or similar mark (whether based on use or intent to use), the earlier-filed application will have priority in the registration process. (The applicant of the later-filed application will typically be told that if the first application is approved for registration, that later one may be blocked.) Depending on specific circumstances, there may be other advantages to the intent-to-use application that we can discuss with you.

Statement Of Use

Applications based on intent to use in the United States must be converted to use before a registration will issue — that is before the USPTO will allow the mark to register, the applicant must put it to use in the United States for all of the goods or services covered. If the applicant only wants to put it to use for some of the goods or services, a Request to Divide must be filed, or the goods and services that are not in use must be deleted from the pending application.

Applications based on foreign applications or registrations do not need to be placed in use in the United States in order for a registration to issue. However, like all United States registrations, failure to use the mark for a consecutive period of three (3) years constitutes prima facie abandonment of a mark, and during the sixth year of registration, the registrant must demonstrate the use of the mark in the United States.

Statement of Use, called Allegations of Use at this stage, may be filed at any time prior to the application being accepted for publication. Once accepted for publication, a Statement of Use can only be filed once a “Notice of Allowance” issues. If use of the mark has commenced, or you believe it will commence imminently (before acceptance for publication), please advise us so that we can provide you with additional information we will need for your Allegation of Use. The publication starts the period in which opposition proceedings against your application may be filed by third parties.

Statements of use must include (a) evidence of use in each class of goods or services (provided that the mark is in use for all of the applied-for goods or services unless a Request to Divide has been filed); (b) date of first use of the mark anywhere; and (c) date of first use in the United States.

Notice Of Allowance

Approximately six weeks after the expiration of the opposition period or conclusion of any opposition action, a Notice of Allowance will issue. The Notice of Allowance starts the three-year period within which the applicant must commence use of the mark. An extension request must be filed every six months until use of the mark commences. After the first extension request, it is also necessary to advise the trademark office what steps are being taken to commence use of the mark in commerce. Examples of acceptable steps are:

  1. Product or service research development

  2. Market research

  3. Promotional activities

  4. Steps to acquire distributors

  5. Steps to obtain required governmental approval, or similar specified activities

Requests To Divide

A Request to Divide an intent-to-use application is filed where the applicant has put a mark to use for some classes of goods/services, but not all of them. The reasons could be commercial, or an Office Action might have determined that refusals to register only apply to certain classes. In such instances, the divided goods/services will remain in the “parent” application, while the “child” application containing the goods or services in use will proceed separately.

Request to Divide an application may be filed at any time between the application filing date and the date on which the mark is approved for publication. It may also be filed during an opposition or concurrent use proceeding upon a motion granted by the TTAB.

Declaration Of Use And/Or Excusable Nonuse

A declaration under §8 submitted by the trademark owner attesting to the use of the mark or, if not in use in whole or in part, identifying the special circumstances that excuse nonuse. (Business decisions and decreased demand do not excuse nonuse.)

Declaration Of Incontestability

An optional filing by a trademark holder who has used its mark continuously for a period of five years is filed under §15. Upon acceptance, this serves as conclusive evidence of the validity of the registered mark and the owner’s exclusive right to use it foreclosing, among other things, a challenge based on a prior user’s earlier use of a confusingly similar mark. It is highly recommended that an incontestability affidavit be filed at the earliest date.