FinalRefusal.com


© Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418, (651) 500-7590, WP@NJP.legal. This web 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.