How to respond to a trademark office action that refuses or rejects your trademark application.

When responding to a trademark office action, you need to consider:

1. any statements you submit to the Trademark Office may be later used against you;
2. the statements of the trademark examining attorney might be used against you if you do not present argument or evidence to clarify or rebut the examiner’s position;
3. if there is a “likelihood of confusion” with another trademark;
4. if the trademark may be “descriptive” or generic term for the stuff in your goods and services;



5. any other grounds for refusal, for example, formalities, trademark samples, ornamentation, geographic significance, deceptiveness, false connections, etc.;
6. what kind of evidence was presented by the trademark examiner;
7. what types of evidence are available to you to support your trademark;
8. what will be the impact of limiting or clarifying your trademark;
9. what relationship you have to any third-party who’s trademark may be mentioned in the office action; and
10. whether and how you should interview the trademark examiner.

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TM UPS Brown Gone Bad

The UPS driver was here today. He told me about a fake-brown UPS truck that was pulled over by a Department of Public Safety Detective. Before I go further, I should say that colors are difficult to trademark. Why? Because, the consumer must associate a particular color with a particular service or product. Famous color trademarks include John Deere Green and UPS Brown. [Read more]