Definitions for Responding to a USPTO Office Action

 

Legal References
Legal references generally refer to specific laws, court and agency decisions, and legal texts that pertain to federal trademark registration.  For example, the following is a legal reference to the federal trademark law, namely, Section 1 of the Trademark Act:  15 U.S.C. §1051.  Because filing a trademark application at the USPTO starts a legal proceeding, legal references appear throughout an Office action (an official letter) to provide the legal basis for any requirement and refusal.  The text surrounding such legal references should explain the issue.
 

Office Action
When a USPTO examining attorney determines that your application is incomplete or needs amendment, or your mark may not be entitled to registration, the examining attorney will notify you in a written official letter, which is the examining attorney’s  “Office action.”  A “final” Office action will issue only after you have had an opportunity to respond to all issues with your application.  A first Office action is never a final Office action.  You may only appeal the examining attorney’s requirement(s) or refusal(s) after a final Office action has issued.  Otherwise, the appeal will be considered premature.  The first page of an Office action will identify whether it is a final action.  If you’re not sure, ask the examining attorney. 

 

Appeal
An appeal from an examining attorney’s final Office action is taken to the USPTO’s Trademark Trial and Appeal Board (TTAB).  To appeal, you must file a “notice of appeal” and pay the appeal fee, within six months from the date of issuance of the final Office action.

 

Acquired distinctiveness under Section 2(f)
The word “distinctive” has a particular meaning in trademark law. If a given symbol, word, or other designation is not inherently “distinctive,” it is not a “mark” and may be registered with the USPTO only upon proof that it has become distinctive.  So, “acquiring distinctiveness” means acquiring trademark status.

Examples of types of designations requiring proof of acquired distinctiveness include (not an exhaustive list): descriptive designations; laudatory descriptive designations; geographically descriptive designations; surname designations; the title of a single literary work; and ornamental matter. 

For example, to achieve trademark status, the descriptive designation SPEEDY & CHEAP, used to identify a commercial photocopying service, would need to acquire trademark meaning in customers' minds as indicating a single source of photocopying services. The original or initial meaning describes a place to obtain fast service at an affordable price.  But the business using this wording would need to acquire another meaning, a trademark meaning, to be associated with it as well, and the new additional meaning would need to identify and distinguish them as a commercial source for the services.

The new meaning does not replace or overshadow the original meaning, but adds a new layer of meaning. You do not need proof that consumers know the name of the company that owns the trademark.  It requires only that customers associate the word or symbol with a single, even if anonymous, commercial source.

Evidence of acquired distinctiveness includes: ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register; affidavits, declarations under 37 C.F.R. §2.20, letters, or statements from the trade and/or public, or other appropriate evidence showing that the applied-for mark distinguishes the goods/services; advertising expenditures; sales volume and length of time the applied-for mark has been in use in commerce; other appropriate evidence showing the duration, extent, and nature of the applicant’s use of the applied-for mark in commerce.

 

Principal Register                                                                                                                                    
The Principal Register is the primary register for all trademarks. When a mark has been registered on the Principal Register, the mark is entitled to certain rights provided by federal law. The advantages of owning a registration on the Principal Register include the following:

  • Presumed notice to the public of the registrant’s claim of ownership of the mark;
  • A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration (useful in court proceeding);
  • A date of constructive use of the mark as of the filing date of the application (also useful in court proceeding);
  • The ability to bring an action concerning the mark in federal court (considered an advantageous venue)
  • The ability to file the registration with the U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
  • The registrant’s exclusive right to use mark in commerce on or in connection with the goods/services covered by the registration can become “incontestable,” subject to certain statutory defenses (also useful in court proceeding); and
  • The use of the registration as a basis to obtain registration in foreign countries.

NOTE: If you do not specify a register, the USPTO will presume that you are seeking registration on the Principal Register.
 

Supplemental Register
The Supplemental Register is a listing of non-mark designations (such as descriptive words) that are “capable” of eventually becoming a “mark.”  That is, a designation on the Supplemental Register is not a “trademark” yet, however it does provide the following advantages:

  1. The registrant may use the registration symbol ®;
     
  2. The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
     
  3. The registrant may bring suit for infringement in federal court; and
     
  4. The use of the registration as a basis to obtain registration in foreign countries.

 

Acceptable specimens for Goods
A specimen for goods (products) usually shows the mark on the actual goods, on labels/tags affixed to the goods, on packaging, or in a product display for the goods (such as a window display).  Advertising materials are generally not acceptable as a specimen for goods, nor are materials used to carry out your daily business (e.g., invoices, packing slips, etc.).
The USPTO typically accepts the following specimens for goods:

  • A photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug);
  • Product labels and tags showing the mark (e.g., the hangtag or label tag on a t-shirt);
  • Product packaging showing the mark (e.g., detergent soap packaging);
  • Signage used in a product display at a store (e.g., a photograph of the display);
  • A webpage showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a computer laptop, the mark for the laptop appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page); and
  • For downloadable software, copies of the instruction manual and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program.

 

Acceptable specimens for Services
A specimen for services generally shows the mark used in the sale, rendering, or advertising of the services.  A consumer should be able to directly associate your mark with the services you identified in the application on the specimen.  The USPTO typically accepts the following specimens for services:

  • Print or Internet advertising;
  • Brochures and leaflets;
  • Menus for restaurants;
  • Business cards and letterhead with a reference to the services;
  • Marketing materials;
  • A photograph of business signage and billboards; and
  • A photograph of a musical band performing with the band's name displayed during the performance (e.g., on the band's drum).


Use in commerce as of a certain Date                                                                                                             In an application based on use in commerce under §1(a) of the Trademark Act, the substitute or additional specimen must have been in use in commerce at least as early as the application filing date.   If the substitute specimen is being submitted in connection with an amendment to allege use under §1(c) of the Act, the affidavit or declaration under 37 C.F.R. §2.20 must state that the substitute or additional specimen was in use in commerce prior to filing the amendment to allege use.  And an applicant who files a substitute specimen after a statement of use under §1(d) of the Act must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).

  • From the electronic filing form:  Select the following statement: "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application" [for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use [for an application based on Section 1(b) Intent-to-Use]."


Merely descriptive
Merely descriptive wording or designs generally serve to merely describe your goods and/or services, or some aspect of your goods and/or services; e.g., COLD AND CREAMY for ice cream; or a realistic picture of a cue stick and eight ball for billiard parlor services.


Generic
Generic wording or designs are generally the common name or appearance of your goods and/or services; e.g., ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys.


Geographically descriptive
Geographically descriptive wording or designs generally serve to describe the origin of your goods or the location where your services are provided; e.g., VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating in Canada.

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