My Trademark Was Refused…Now What?

Intro from Barcus Patty – CSO at SixLeaf.

We can talk about Amazon, keywords and rankings all day but realize that’s only a piece to the puzzle of building a long lasting brand.

You need access to information about everything that revolves around running a successful business. Part of building a success business is protecting what you’ve built. Specifically, getting the appropriate trademarks needed specific to your business.

Having a trademark grants you the ability to access Amazon’s Brand Registry 2.0, but gives you undeniable proof that your Brand is your Brand. Whether you find unauthorized sellers on Amazon.com,  or run into a counterfeiter who is selling knock offs of your product at a cheaper price, this could not only destroy sales and rankings but your brand image which is invaluable.

For this specific topic, we needed to bring in an expert.  Bethany Gaal Patty started her practice in the beginning of 2018 helping brand owners in E-Commerce after seeing a need to educate people about protecting your brand across your site and all marketplaces. Bethany specializes in Trademark search and filings as well as Intellectual Property cases for sellers on Amazon.com, Etsy.com, Walmart.com etc. (She’s also my amazing wife. #shamelessplug)

So enough from me. Check out Bethany’s original post below about what to do when your Trademark is refused and understand next steps necessary.

 

A Time To Prepare

As a brand owner and an e-commerce seller, federal and international trademark protection is essential.  Many attempt to submit a trademark application through the U.S. Patent and Trademark Office on their own; and often the mark will breeze through straight to registration. However, as thousands of marks register every year, the chances of encountering the dreaded refusal are becoming higher and higher with each day. 

If you have received one of these Office Actions issuing a “2(d)” or “2(e)” refusal, or any of a number of statutorily numbered refusals, or if you are simply considering applying for trademark protection for your brand, this brief overview will give you an aerial-view guide to handling a refusal.

(1)  Familiarize yourself with the types of refusals. Knowing what you are up against can give you a foundation for building a case for your mark:

  • Section 2(d)—This is the most common type of refusal—a likelihood of confusion. This means that your mark is similar enough in appearance, sound, and goods/services covered to another registered trademark in the USPTO database to cause the Examining Attorney to determine that there is a likelihood that the general consumer will confuse the two.
  • Section 2(e)—The “mere descriptiveness” refusal often catches trademark owners off-guard.The Examiner essentially finds that your trademark merely describes a quality of function of your product and refuses registration on that basis.  The rationale here is that brand owners should be able to use descriptive language in advertising without fear of infringing on IP rights.
  • Unacceptable specimen—This refusal occurs when the “specimen,” or evidence of your mark’s use in commerce, does not meet USPTO standards.
  • Primarily merely geographically descriptive or primarily merely a surname—This is pretty self-explanatory: you cannot choose trademark with a primary significance of a location or a name.

(2)   Read the Office Action Carefully. Believe it or not, the Examining Attorneys are flawed human beings, and they do make mistakes in reviewing applications.  Sometimes they apply case law wrongly, misidentify your goods or services, and often cite a refusal that is unmerited or flat-out wrong.  Reading and re-reading your Office Action can not only help you catch possible human error, but can give you a better understanding of exactly what your particular obstacle is.  You should also always review the cited conflicting mark’s specs.

Reading and re-reading your Office Action can not only help you catch possible human error, but can give you a better understanding of exactly what your particular obstacle is.

(3)  Choose a course of action.

  • If you opt to argue against the Examining Attorney’s decision, carefully draft a substantive response. This means use fact-based arguments and analogies to support your thesis. It is always a good idea to submit evidence as attachments to your argument; i.e., attach third-party trademark registrations or screenshots of webpages if applicable.  There are numerous strategies to overcoming a likelihood of confusion rejection—but that’s for another article (coming soon).
  • A second and increasingly more common approach to a likelihood of confusion refusal is to reach out to the owner of the conflicting trademark and see if they are amenable to a consent agreement. Submission of this agreement allows you to co-exist with the cited mark despite the refusal.  However, there are risks here; and the Examiner is not required to accept the consent agreement.
  • If you feel that you have superior rights to the cited mark, you can move to cancel its registration. Many brand owners do not know that they begin accruing common law rights to their mark from its first use in commerce.  If your use of your trademark predates that of the registered trademark, you may be able to assert those rights.

What We’ve Learned

The bottom line:  Don’t let your application go abandoned.  You have a strict deadline of six months to issue a response to an Office Action.  Craft a plan of action as soon as you can after receiving your refusal—gather evidence and do your research; or, hire an attorney to do it for you.

If you have received a refusal from the USPTO and are unsure how to proceed or if you have questions about the process, e-mail me at [email protected]

Original Post Credit HERE

By |2018-11-23T08:35:10+00:00November 21st, 2018|Amazon, walmart marketplace|

About the Author:

Bethany is an intellectual property attorney based on the Gulf Coast and serving clients worldwide. She has trained under some of the foremost brand protection lawyers in the business, honing her skills as both a trademark attorney and an Amazon expert. Her site can be found at gaalpattylaw.com Bethany received her juris doctor from Mississippi College School of Law, where she graduated cum laude with a certificate in International and Comparative Law. She was associate editor of the MC Law Review and President of the Women’s Student Bar Association, and clerked for several firms in Jackson, MS. She is a member of the Alabama State Bar Association and Mobile Young Entrepreneurs; and she currently serves on the Junior Board for the AL chapter of the American Foundation for Suicide Prevention. She now resides in beautiful Fairhope, Alabama, with her bearded entrepreneur husband and wild-child baby daughter.
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