Office Action(s) from USPTO

The average time before a trademark application was first examined in 2012 was 3.2 months (see TrademarkStatistics.com for more information).  After a trademark application is submitted there are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and the trademark is Published for Opposition; or Refusal-the 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 descriptive trademarks are shown below. Many trademark applications that are submitted to the USPTO have serious issues, approximately 40-50% of trademark applications that are disposed of by the USPTO are abandoned for failure to answer office actions or after final refusals. Approximately seventy percent (70%) of applications are refused at least once.


Trademark registrations are very FACT dependent, they depend on the mark being proposed, the goods or services being sold, how the application is filled out and if the specimens are acceptable and show the mark functioning as a mark. Whether a trademark application is correct enough and strong enough to support a trademark registration and whether the registered trademark is a strong trademark is a question of fact decided by the USPTO on a case-by-case basis.

The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985); In re Venturi, Inc., 197 USPQ 714 (TTAB 1977).

We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark rather than a plan for filling out a form:

To Verify a potential trademark is strong, available to use, and ready to register involves analyzing the facts involved with a specific mark and how it is used (or what the intent to use is). To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength (this avoids merely descriptive and descriptive refusal office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive and others)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration and incorrect IDs  can also cause problems with merely descriptive refusals because some identifications are not inherently distinctive without acquired distinctiveness by definition)


Not Just Patents® Legal Services can help many applicants avoid or overcome descriptive refusals and other refusals. Call us for help at (651) 500-7590 before letting your mark go abandoned or before letting a form filling service get you off to a bad start. Most form filling services acknowledge that they are not giving legal advice (look for the disclaimers on the web pages). Filing a USPTO trademark application is a legal proceeding that requires an applicant to satisfy many legal requirements within strict time deadlines.  The number of trademark applications that are abandoned for failure to respond correctly to office actions is too high!


Actual Office Actions Refusals for Descriptive Trademarks

This mark went abandoned approximately 5 years after it was submitted. This was a pro se application (no attorney).


Section 2(e)(1) - Descriptive Refusal

 The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.  

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).  

The applicant’s mark as a whole describes the feature of the services of allowing a person to obtain  XXXXX.  See attached definition of “acquire” from Merriam Webster On-line Dictionary.  When a person buys a XXXXX good using the applicant’s services they obtain it, get possession of it – i.e. they acquire XXXXX.  

Consumers encountering the mark ACQUIRE XXXXX for retail services that sell XXXXX goods will immediately discern the descriptive meaning of obtaining, getting, possessing XXXXX from the applicant’s services.  

Accordingly, registration is refused under Trademark Act, Section 2(e)(1).

Although the examining attorney has refused registration, the applicant may respond to the refusals to register by submitting evidence and arguments in support of registration.

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The following application was abandoned, revived, received a final refusal, reconsidered and abandoned again  4-1/2 years after it was submitted. This was filed by an attorney.


Mark is Merely Descriptive

Registration is refused because the proposed mark merely describes the applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

The determination of whether a mark is merely descriptive is considered in relation to the identified services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

A term need not describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the services to be found merely descriptive.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).

The applicant applied to register the mark XXXXXLINE for telephone dating services.  The term XXXXXLINE is defined as a telephone services allowing a number of people to phone the same number and have a conversation.  See attached definition from www.encarta.msn.com.

Based on an examination of the applicant’s specimens, the applicant provides a telephone number that allows a number of people to have conversations.

The term XXXXXLINE is merely descriptive as it immediately names the applicant’s services and does nothing else.  Accordingly, the mark is refused registration of the Principal Register under Section 2(e)(1).  Based on this analysis, the examining attorney finds the mark might generic.  Amendment to the Supplemental Register cannot be recommended.

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The following office has the words STATE NAME replacing the actual name of the state. The examiner gave the following recommendation:

TRADEMARK COUNSEL SUGGESTED

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.  Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.


SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE

Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a). The applicant proposes the mark “STATE NAME MILK” for “Chocolate milk; Condensed milk; [ ].”

A mark is primarily geographically descriptive when the following is demonstrated:

(1)        The primary significance of the mark is a generally known geographic place or location;

(2)        The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and

(3)        Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.

TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1309 (TTAB 2006).

The term STATE NAME in the mark is of primary geographic significance, as it identifies a state in the XXX United States. See attached Internet evidence demonstrating a definition of the term. The applicant is located and  in the state of STATE NAME and the applicant’s goods originate from that location and due to the significance of the term a good-place association is presumed. Applicant’s own webpage describes the goods as “STATE NAME Milk is locally STATE NAME produced milk that is the freshest most wholesome milk available to the STATE NAME Consumer.”

When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods and/or services originate in the place named in the mark.  TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver).

Furthermore, the addition of the term MILK fails to diminish the geographic significance of the mark. The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance.  TMEP §1210.02(c)(ii); see, e.g., In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of the transportation of passengers and goods by air). Therefore, registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods.

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This application was refused for requesting registration on the Supplemental Register when the examiner did not believe that it should be there.


II.   INFORMALITIES

Applicant must respond to the requirement(s) set forth below.

A)  Amendment to Principal Register required

Applicant has applied for registration of its mark on the Supplemental Register.  However, applicant’s mark is eligible for registration on the Principal Register.  A mark that is clearly eligible for registration on the Principal Register cannot be registered on the Supplemental Register.  Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm’r Pats. 1957); TMEP §815.01.  Applicant must amend the application to the Principal Register.

Pending a proper response, registration on the Supplemental Register is refused because the mark is eligible for registration on the Principal Register.  TMEP §815.01; see 15 U.S.C. §1091(a).

Upon amendment to the Principal Register, applicant must enter the following disclaimer:

Applicant must disclaim the descriptive wording “REHAB” apart from the mark as shown because it merely describes the exact nature of applicant’s medical evaluation services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

No claim is made to the exclusive right to use “REHAB” apart from the mark as shown.

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

The Trademark Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03.


Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP §1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP §1213.10.

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Call us at 1-651-500-7590 for help getting your trademark registered.


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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

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)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

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

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

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  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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