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Office Actions / Provisional Refusals

The U.S. Patent and Trademark Office occasionally refuses trademark applications after an initial review by an examining attorney. These refusals entitle the applicant to respond within 6 months of the mailing of the office action/provisional refusal. Refusals may be informal, requiring clarification or amendment of the application in order to place it in proper condition for publication. Informalities include problems with the identification of goods or services, the legal entity status or citizenship of the applicant, improper specimens, or improper dates of use.

More complicated problems may involve substantive refusals, for example, refusals based on merely descriptiveness or generic, likelihood of confusion, surnames, false suggestion of connection, or scandalous marks. Whatever the problem may be our experienced trademark attorneys will provide a free evaluation to determine whether or not the problem can be fixed. After the consultation, we will provide a quote for responding to the office action/provisional refusal.

Sample of Our Successful Office Actions Responses

Refusals based on Likelihood of Confusion:
Successfully argued that no likelihood of confusion exists between GLUCOJOINT, Ser. No. 85537657, and GLUZOJOINT-F, Reg. No. 3788282 -- both for dietary supplements. Read More
Argued that no likelihood of confusion exists between FILTER PRO Ser. No. 86170150 for air and liquid filters for industrial installations, and FILTER PRO Reg. No. 2509352 for oil filters, air filters, and fuel filters. Read More
Argued sucessfully that no likelihood of confusion exists between EXCELLANCE Ser. No. 79138280 for perfumes and cosmetics, and EXCELLENCE Reg. No. 1116798 for hair coloring preparations owned by L'Oreal and between EXCELLENCE Reg. No. 3553048 for colognes, perfumes and cosmetics. Read More
Successfully argued that no likelihood of confusion exists between SPYRAL, Ser. No. 85479842, for "live performances by a musical band" and SPYRALI, Reg. No. 3627046, for "organization of exhibitions for cultural or entertainment purposes." Read More
Successfully argued that no likelihood of confusion exists between AZBOOKS, Ser. No. 85514623, and A-to-Z MYSTERIES, Reg. No. 2235339 -- both for "books". Read More
Successfully argued that no likelihood of confusion exists between CSS CORREA CLAIMS SERVICE, Ser. No. 85335538, and CSS COASTAL CLAIMS SERVICES, Reg. No. 3208433, and CSS, Reg. No. 3037532 -- all for insurance-related services. Read More
Successfully argued that no likelihood of confusion exists between ELECTBENEFITS, Ser. No. 86351419, and SELECTBENEFIT Reg. No. 1722413 both for financial services. Read More
Refusals based on Descriptiveness:
Successfully argued that COURSE ASSIGN, Ser. No. 85608396 is not "merely descriptive" for on-line software which allows students and teachers to correspond and discuss homework assignments because the "COURSEASSIGN" services do not literally "assign courses", and COURSEASSIGN is a "coined term" with a unique, non-descriptive meaning. Read More
Successfully argued that a mark comprised of Chinese characters which transliterates and translates into the English CLASSIC BLUE COLOR Ser. No. 79108134 is not "merely descriptive" for an alcoholic spirit because, although the product packaging for the beverage was blue, the liquid itself was not blue; and alcoholic beverage makers commonly advertise their products using color themes in a non-descriptive fashion, and without referring to the actual color of the beverage. Read More
Successfully argued that the mark XLBRAKE, Ser. No. 85351126 is not "merely descriptive" for "extra-large" sized auto brakes because "XL" refers to "acceleration", not the size of the brakes; and because auto brakes are not normally sold in "extra-large" size. Read More

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