Overcoming Refusals and Starting Over

Example of common refusal: Geographic terms: As a general rule, trademarks involving a geographical term are "weak" and are entitled to a narrow scope of protection. Depending on the facts, to overcome the refusal the link between the geographic mark and the term can be disputed, an exception can be argued, acquired distinctiveness can be argued, or an amendment to the Supplemental Register may be possible. A mark that is composed entirely of a geographic term may be registrable only on the Supplemental Register or on the Principal Register upon proving acquired distinctiveness (that mark has become distinctive of that party's goods in commerce).

If you wanted to start stronger: A mark that is a composite of a geographic term and a distinctive term may be able to register on the Principal Register if the geographic term can be disclaimed and the remaining part of the composite term is distinctive. Planning for a strong trademark from the beginning can not only avoid refusals but can also lead to a trademark with a wider scope of protection. (Are never-ending legal fees protecting a weak mark a good strategy?)


Overcoming A Substantive Refusal

Not Just Patents ® Legal Services generally answers refusals for any of our application clients as part of the service at no extra charge. An exception to the no charge for answering a refusal would be if the client decided against a trademark search or went against advice on the implications of a trademark search and the application was refused on the basis of a previously identified likelihood of confusion. We also answer refusals for clients who have used other services and sometimes will even offer a discounted service if you used one of the form services who really messed up your application.


If an applicant is not represented by an attorney it is called pro se. A pro se applicant may be able to answer refusals themselves but keep in mind that your adversary, the USPTO trademark examiner, is a well-trained full-time attorney with experience in deciding if applications meet USPTO rules and trademark law.


If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. If you are going to try and answer the refusal yourself, you should simply and completely address the points raised by the examining attorney in the Office Action. Applicants are not required to provide case law support but may if it is appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal. Sometimes the examining attorneys give suggestions on how to overcome refusals, an example of  actual instructions from a trademark examiner on how to overcome a surname refusal is below in red.


Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board and submit a request for reconsideration if appropriate; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. The same trademark issues that caused the refusal may also limit the rights associated with the mark under common law.


Office Action(s) from USPTO

There are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and it is Published for Opposition; or Refusal-examiner refuses the mark for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised. Some actual redacted refusals for being “merely descriptive” are shown below. Between 65 and 70% of trademark applications are refused at least once.

Applicants (or their representative) must address each issue raised by the examining attorney and responses to office actions (ROA) must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned.

If the response does not overcome all refusals, the examining attorney will issue another refusal or a final refusal. [Some trademark applications take years to cycle through all the refusals and replies.]

An examiner may suggest registration on the Supplemental Register as an alternative to the Principal Register to overcome a merely descriptive refusal, distinctiveness refusal or failure to function as a trademark or other reasons. See Comparison of Principal Register and Supplemental Register.

To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.


For Oppositions based on Merely Descriptive trademark applications, see Merely Descriptive Oppositions.


Example of Actual (redacted) USPTO Statutory Refusals

SUBSTANTIVE REFUSAL

SECTION 2(e)(4) – SURNAME REFUSAL[a type of merely descriptive refusal]


Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.  The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname.  In re Etablissements Darty et Fils, 759 F.2d 15, 17-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); see TMEP §§1211, 1211.01.

Please see the attached evidence from LexisNexis®, establishing the surname significance of the surname “SMITH”.  This evidence shows the applied-for mark appearing 799,270 times as a surname in a nationwide telephone directory of names.

The following five factors are used to determine whether a mark is primarily merely a surname:

(1)        Whether the surname is rare;

(2)        Whether anyone connected with applicant uses the term as a surname;

(3)        Whether the term has any recognized meaning other than as a surname;

(4)        Whether the term has the structure and pronunciation of a surname; and

(5)        Whether the term is sufficiently stylized to remove its primary significance from that of a surname.


 In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.


 However, there is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname.  This question must be resolved on a case-by-case basis.  TMEP §1211.02(a); see, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986).  The entire record is examined to determine the surname significance of a term.  The following are examples of evidence that is generally considered to be relevant:  telephone directory listings, excerpted articles from computerized research databases, evidence in the record that the term is a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term.  TMEP §1211.02(a).

In the instant case, applicant’s mark is a very common surname as evidenced by the LexisNexis® database.  Moreover, the issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname in a computerized database with the total number of listings in that database, because even the most common surname would represent only a small fraction of such a database.  Rather, if a surname appears routinely in news reports, articles and other media as to be broadly exposed to the general public, then such surname is not rare and would be perceived by the public as primarily merely a surname.  In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); see TMEP §1211.01(a)(v).  The attached evidence demonstrates that the wording “SMITH” appears routinely in media as a surname.  The mark is in standard characters and contains no stylization.  Moreover, the history of Smith Electric Vehicles U.S. Corp. relates back to the early 20th century Smith family.  See attached evidence.

Combining a surname with the generic name for the goods and/or services does not overcome a mark’s surname significance.  See In re Hamilton Pharms. Ltd., 27 USPQ2d 1939 (TTAB 1993) (holding HAMILTON PHARMACEUTICALS primarily merely a surname for pharmaceutical products); In re Cazes, 21 USPQ2d 1796 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a surname when used in connection with restaurant services); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES primarily merely a surname for hotel and motel services); TMEP §1211.01(b)(vi).  In the instant application, applicant’s mark contains the additional wording “ELECTRIC”, which is generic/highly descriptive in relation to the identified services, namely, “maintenance and/or repair of electric vehicles.” A word or term that is the name of a key ingredient, characteristic or feature of the goods and/or services can be generic for those goods and/or services and thus, incapable of distinguishing source.  A term does not need to be the name of the goods and/or services to be found incapable of serving as an indicator of origin.  In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (holding CUSTOM BLENDED generic for gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (holding PASTEURIZED generic for face cream); Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (holding SUDSY generic for ammonia); In re Eddie Z's Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (holding BLINDSANDDRAPERY.COM generic for online retail store services featuring blinds, draperies and other wall coverings); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (holding CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (holding ART DECO generic for flatware); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (holding HENNA ‘N’ PLACENTA generic of ingredients for hair conditioner); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas); see TMEP §§1209.01(c) et seq.  The term “ELECTRIC” is defined as “An electrically powered machine or vehicle”.  See attached evidence.  The identification of services makes it clear that this additional wording is generic/highly descriptive in relation to the services, and, thus, it is proper to issue the Section 2(e)(4) refusal, and require a disclaimer if applicant amends to the Supplemental Register, or to the Principal Register under Section 2(f).


Response Options for Surname Refusal

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying one of the following:

(1)        Submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in the application and for the same or related goods and/or services.  37 C.F.R. §2.41(b); TMEP §1212.04.;

(2)        Submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.”  37 C.F.R. §2.41(b); TMEP §1212.05(d).; or

(3)        Submitting actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §1212.06,  Such evidence may include the following:  examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.

Trademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.


If applicant cannot satisfy one of the above, applicant can amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a).


 

First refusal: SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature or purpose of applicant’s goods and services, in that the printed publications are about relocating ones pet and the services are making arrangements for pet travel/relocation.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).

In this case, applicant has applied for PET RELOCATION for “printed products, namely, product guides featuring information on pet transportation; arranging for pickup, delivery, storage and transportation of documents, packages, freight and parcels via ground and air carriers.”  The examining attorney relies on the specimen of record and the identification of goods/services which indicate that the identified goods/services provide information about relocating ones pet from one part of the country to another and entail the actual arrangement of transport to relocate ones pet due to a family move.  Accordingly, registration must be refused


Second refusal: SECTION 2(f) CLAIM INSUFFICIENT TO OVERCOME DESCRIPTIVENESS REFUSAL

Applicant amended the application to assert acquired distinctiveness based on five years’ use in commerce.  However, because the applied-for mark is highly descriptive of applicant’s goods and/or services, the allegation of five years’ use is insufficient to show acquired distinctiveness.  In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a).  Additional evidence is needed.

In this case, the wording “PET RELOCATION” merely describes the subject matter of the printed product guides, which include information about pets traveling to new homes, and describes the subject matter of the services, which include arranging for the relocation of animals via ground and air carriers.  See also the attached information from www.google.com which begin to show over 43,000 hits for the phrase “pet relocation.”  Clearly, this wording is highly descriptive when used in connection with information or services related to animal travel, adoption, etc.

Evidence of acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.  The Office will decide each case on its own merits.

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness:  (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies.  See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).  A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq.

Because the current Section 2(f) evidence is insufficient to overcome the refusal, the Section 2(e)(1) refusal is continued and maintained.


Third refusal (there were five total refusals and an appeal that did not succeed)

SECTION 2(e)(1) REFUSAL – GENERIC FOR CLASS 035 SERVICES

Registration is refused because the applied-for mark is generic for applicant’s Class 035 services, in that the arranging of transportation for pets is encompassed by pet relocation services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods and/or services.  TMEP §1209.01(c); see In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods and/or services, and cannot be registered as trademarks and/or service marks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”  In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); see TMEP §1209.01(c).

A two-part test is used to determine whether a designation is generic:

(1)   What is the class or genus of goods and/or services at issue?; and

(2)   Does the relevant public understand the designation primarily to refer to that class or genus of goods and/or services?

In re 1800Mattress.com IP LLC, 586 F. 3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i).

In this case, applicant’s Class 035 services are broad enough to include the arranging for pickup, delivery, storage, and transportation of freight in the nature of animals or pets.  Indeed, according to applicant’s specimen and evidence, it is in the business of arranging travel and safe passage for pets, usually when the pets’ owners are relocating.  Applicant breaks down its services, including special services for “corporate pet relocation,” “military pet relocation,” and “large and exotic relocations.”  The fact that applicant, itself, uses the phrase “pet relocation” as a noun (genus of its services) satisfies the first part of the two-part test above.  As to the second part of the test, it is clear from applicant’s own evidence (August Business Journal article specifically refers to “pet relocation” generically, with the headline: “Austin Couple sells one business to grow pet relocation services online”) and the websites attached (www.shadyspringpetrelocation.com and www.happytailstravel.com) that pet relocation is its own field of services offered by third parties.  These services ensure that a pet travels safely either by ground or air travel and meets up with its owners at the proper destination.  Making these travel arrangements is a necessary part of the relocation service.  Consumers would not view applicant’s mark as anything more than the generic wording for the services at issue.  Therefore, applicant’s mark is refused on the grounds of being generic for the Class 035 services.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.


APPLICANT’S SECTION 2(f) CLAIM

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.  Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); see In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); TMEP §1212.05(a).

As to the Class 016 goods, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party.  See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1 USPQ2d 1657 (TTAB 1986).  Because applicant’s mark is highly descriptive of the subject area of the Class 016 goods, even though applicant has submitted some information about marketing and sales figures and has submitted some articles which mention its business, it is still unclear that consumers know to associate the highly descriptive wording “PET RELOCATION” with only applicant and its goods.

As to the Class 035 services, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark.  Such a designation cannot become a trademark under any circumstances.  See In re Bongrain, 894 F.2d at 1317 n.4, 13 USPQ2d at 1728 n.4; H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).




See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA) and/or Amendment to Allege Use (AAU)(after an Intent-to-Use application) may be less than what you think and the time saved may be months or years. Better yet, have Not Just Patents ® Legal Services prepare your application (including choosing the best specimens) from the beginning.

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Steps to a Patent    How to Patent An Invention

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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)

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Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions

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How To Show Acquired Distinctiveness Under 2(f)

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Why Not Just Patents? Functional Trademarks   How to Trademark     

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What are Dead or Abandoned Trademarks?

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Can I Abandon a Trademark During An Opposition?

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Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

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Descriptive Trademarks Trademark2e.com  

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

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Not Just Patents Often Represents the Underdog

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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  

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Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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