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US Trademark Application: Response to Office Actions

Updated:2018-9-11 14:19:05    Source:www.tannet-group.comViews:166

US trademark application is popular among business individuals and enterprises. A successful registration gives the exclusive rights to use that trade mark in relation to the goods and/or services you provide. If you have filed a trademark application, there is a chance the United States Patent and Trademark Office may deny your application based on a prior trademark that another person or company registered before you filed your trademark application. With the right evidence and legal theory, an Office Action response to a likelihood of confusion refusals can convince the government attorney to withdraw the objections and allow your application to proceed. Tannet can help you in this regard.

How to Respond to an Office Action?
1. Carefully look through the office action
First, carefully read the legal analysis by the government attorney. Did the government attorney reject all of your goods and services, or just some? Are there any specific reasoning for why it thought the marks would be confusing? In addition, look at the other headings in the Office Action. Did the examining attorney reject your application for other reasons? Sometimes, fixing those other problems, like clarifying the goods and services, will help differentiate your mark from the problematic trademark registration.

2. Analyze the details of the Cited Mark
Pay particular attention to the literal part of the mark, which will display all of the literal words within the trademark. The Examining Attorney will usually give more weight to those literal words than to a design. Then consider your trademark, does the trademark (including the literal and design portions) resemble your trademark? If your trademark and the Cited Registration trademark share words, are those words common or descriptive in your industry? Considering these factors will help in crafting a potential response to the government attorney.

3. Analyze the goods and services
It can be a tough call as to whether trademarks are confusingly similar, but generally, the Examining Attorney will look at whether they are similar in sight, sound, and meaning for related goods and services. If the goods and services are not related, then you could also argue that point, saying that consumers are unlikely to believe that your goods and services and the Cited Registrations services come from the same source. For both of these arguments, you need to provide both evidence and cases to support your legal theory.

The factors that measure these views are multifaceted, and an effective response will provide a convincing legal theory supported by evidence and examples. This is a place experienced lawyers can be very effective in creating arguments that emphasize strong arguments while explaining and mitigating weaknesses.

Contact Us
If you have further inquires, please do not hesitate to contact Tannet at anytime, anywhere by simply visiting Tannet’s website, or calling Hong Kong hotline at 852-27826888 or China hotline at 86-755-82143422, or emailing to You are also welcome to visit our office situated in 16/F, Taiyangdao Bldg 2020, Dongmen Rd South, Luohu, Shenzhen, China.

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