Why Not Just Patents?

Is your trademark important? Is it worth protecting? For many businesses, a trademark is one of their most valuable pieces of property. Trademarks are property rights that gain value by being used right but may be difficult to protect, maintain, and enforce. Both big and small businesses have trademarks that suffer from misuse by others since really good names and symbols may seem like good names to others too. Trademarks are rights that depends on being out in plain sight rather than locked safely away so looking at strategy and the big picture is really important. Gambling with investor’s money may not be a great idea. The tools to protect trademark rights take time to learn how to use properly; time that business owners should probably be using on their business rather than on learning a part of law that is very specialized.

Why Should I Have A Trademark Attorney Answer My Office Action? Not Just Patents® Legal Services has a very high rate of success on trademark applications, even those that have already been refused. We look at a lot of other attorneys records to see what their success rates are and many do-everything attorneys don’t seem to do well with trademarks. Neither do the big form services. We gets ads from attorneys that call themselves trademark attorneys but their record only shows one or few registered marks or no record at all. Even though there are a lot of ads for all these form services that are supposed to help people do it cheaper for themselves, the refusal and abandonment rate for trademarks is still very high and doesn’t seem to be getting better even though the ads of some of these big firms seem to have big numbers. One of the most famous form services has had multiple class action suits filed against them because of the difference between what people think they are getting and what they really end up with. The number of applications may be very high but the outcome and success rates must not be very high. A lot of Not Just Patents® Legal Service clients first come to us because they have been refused and need help, many of our clients are former clients of form services. We are able to fix a lot of refusals and overcome the descriptiveness refusals or identification problems or other common problems with trademark applications. Often after fixing problems, we usually go on to help the same businesses find better ways to protect other intellectual property assets such as other trademarks, patents and copyrights. A lot of repeat business is a sure sign that people are happy with our services. Call and ask us some questions and we can help you find ways to protect your rights in very budget conscious ways. We are sure that you have a lot of other things to spend your money on than paying high rates for a trademark attorney.

Can every trademark refusal or office action be overcome? Sometimes trademark applications have such huge problems with them, such as a strong likelihood of confusion problem with a competitive trademark, that no answer will overcome the refusal or should overcome. Getting refused and starting over with a better mark should be a much better strategy than getting sued for a likelihood of confusion or getting your web site shut down because it has a likelihood of confusion with someone else’s site. The law that a trademark examiner uses to write a refusal  is based on the same trademark law that the owner of the other mark could use to sue  you. The trademark office and trademark examiners are trying to prevent future liability problems when they refuse applications; changes in trademark rules and procedure that affects applications come directly from lawsuits and other proceedings. There are often other courses of action that can be taken than to just give up on having a trademark. Maybe an agreement can be worked out between parties to allow both businesses to use a mark. Maybe the refused trademark owner was the first user of the mark but second to apply in which case a cancellation proceeding may be the answer. Maybe the mark needs to be changed in a way to make it no longer confusingly similar. The answers to refusals often require a knowledge of the appropriate strategy as well as trademark law.

Why was my trademark application refused? Approximately 70% of trademark applications are refused at least once. Mistakes are easy to make and lots of applicants make them. An unanswered office action means that the mark will go abandoned after the 6 month period to file a timely answer is over. The overall failure rate on trademark applications is very high, between 40 and 50% never register. In theory any business could obtain a trademark if guided properly but not necessarily the trademark that they are trying to register, one big objective of the USPTO is to protect the rights of those who have already registered. The typical mistakes made on trademark applications are selecting trademarks that are too descriptive or too similar to other’s trademarks or not following the application procedures properly. Not Just Patents® Legal Services success rate is very high and most people are surprised that we don’t charge high fees compared to many others but especially compared to the cost of failure without help. The reason why your particular application was refused is very specific to your application and often answering office actions takes knowing the law well and knowing how to apply the facts to the law and knowing the proper procedure for continuing. Some do-it-yourselfers make errors when they try to answer themselves in non-final refusal and end up in more trouble than they started with making it very difficult to overcome the refusal in one final answer and request for reconsideration. Trademark examiners are well trained in following the law and procedure and often give good guidance on what can be done to correct problems but being able to follow that guidance sometimes requires more expertise than a first or second time applicant would have. Often the guidance that the trademark examiner gives is to hire a good trademark attorney.

Why isn’t trademark law common sense so anyone can answer their own office actions? Trademark law isn’t based on just common sense, it is based on providing reasonable protection for those who have built business in trade using unique ways to identify their services or their goods and it is based on a system that incorporates practices based on uniformity within a country and with other countries. Incorporating words and concepts like reasonable, protection, trade, unique, identify, services, and goods into laws and practice requires a lot of rules so that business are treated equally and fairly. Trademark law is based on hundreds of years of case law (how courts have ruled on issues) that have been incorporated in very specific laws with very specific rules of practice. The principles of trademark law are very similar between countries and most countries have incorporated methods of working with other countries’ trademark laws. For instance, most countries do not allow trademarks to register that are too descriptive because this would give individual registrants the right to exclude others from using descriptive words to describe their own products. If all of a sudden you couldn’t call an automobile an automobile without paying someone licensing fees, it would be very difficult while at the same time if you spent a lot of money to build the image of a Rolls Royce as being a quality automobile and someone else could call theirs a Rolls Royce or a Rauls Royce or a Rolls Royze or something else very similar, you would want to be able to stop them. Likewise, if you built a quality product and wanted to be able to sell it outside your original selling area but couldn’t because the laws were dissimilar somewhere else and wouldn’t protect you even if you tried, it would stifle businesses ability to grow and succeed. Trademark law exists in its present form in order to protect trademarks which in turn helps businesses build and keep goodwill.

If a mark is ‘Published for opposition’ does that mean it was opposed? Under U.S. Trademark law a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This does not necessarily mean that it will be opposed or has been opposed. The TESS (TESS FAQ) does not show if a mark has been opposed but the TSDR does show it at the

Status field where it shows as Status:  An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.

What does ‘Notification Of Letter Of Suspension E-Mailed’ mean? A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [if a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the USPTO will notify the applicant of the potential conflict and suspend action on the application pending final resolution of the earlier-filed application.]. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.

What does ‘Examiners Amendment -Written’ mean? An Examiner’s Amendment is a written confirmation of an amendment made to a trademark application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.


Only about 30% of TEAS PLUS applications go straight to publication without an office action so don’t be surprised if you are one of the 70% who receive a refusal of some type. Call us at Not Just Patents® Legal Services. We can help.  See Why Not Just Patents? if you have already applied and been refused.



Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418  



Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

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

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? 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 TTAB Document Service  TBMP 309 Standing

Examples and General Rules 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, TEAS RF and TEAS plus  

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  TMOG Trademark Tuesday

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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Call: 1-651-500-7590 or email: WP@NJP.legal. This 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