Close X

Welcome to our LEGAL BLOG

What is a Substantive Office Action Refusal, and How to Overcome It

Posted by Dragan Dan Ivetić | Jan 20, 2025 | 0 Comments

A man overwhelmed by papers
Feeling Overwhelmed by a USPTO Office Action? (photo credit = Akram Huseyn via Unsplash.com)

What is a Substantive Office Action Refusal, and How to Overcome It

The process of applying for a US trademark registration can be frustrating and paved with potential setbacks at every phase of the process.  One such potential setback is receiving a non-final or preliminary refusal, known as an Office Action. When filing for a trademark registration with the United States Patent and Trademark Office (USPTO), receiving an Office Action can be both frustrating and intimidating. Non-lawyers who file by themselves or via a " do it yourself" website are more likely than not to encounter an Office Action refusal.  For many, that is the end of the process, as they discover that their cheap "do it yourself" service does not (and indeed cannot) help them with the Office Action, and most people simply do not understand what the Office Action is, what they nee to do, nor that there is a strict 3 month timeline to respond.  While Office Actions can be difficult to overcome, very often a well-drafted response can achieve just that, a reconsideration of the refusal, and approval of the application to the next phase.  This article will help to give an introduction to substantive Office Actions, and the way in which to approach a response.

Understanding a Substantive Office Action Refusal

In a prior blog article (click here to read it), we discussed non-substantive Office Actions, which often are not fatal to the application itself, and which can be fixed by fixing the application or providing additional information.  Unlike non-substantive Office Actions, an Office Action stating a substantive refusal generally cannot be rectified or fixed by amending the application.  Rather, the response will need to be a legal brief, citing caselaw authorities and evidence to convince the Examiner Attorney to reconsider and withdraw their refusal.  Such responses are highly legal and technical documents, that are very difficult for non-lawyers.  As a result, it is typically considered the best course of action to consult with an experienced trademark attorney when faced with an Office Action identifying a substantive refusal ground (in whole, or in part).

Common reasons for substantive Office Action refusals include "Likelihood of Confusion" under Section 2(d) and "Merely Descriptive" concerns under Section 2(e)(1). Here's what these terms mean, what they could indicate about your trademark application, and how to respond effectively to overcome them.  The key thing to remember - you only get 3 months to respond to an Office Action!

Section 2(d) Refusal – Likelihood of Confusion

A refusal for Likelihood of Confusion under Section 2(d) occurs when the USPTO believes that your trademark is too similar to another already registered trademark in terms of appearance, sound, meaning, or commercial impression, and is used for related goods or services. Essentially, the examiner thinks your trademark could confuse consumers into believing that your goods or services originate from the owner of the other mark.

In addition to already registered trademarks, a Section 2(d) refusal may arise if there is a prior-filed and still pending application.  In essence, "he who files first" will obtain priority, such that your registration typically will be "suspended" until that prior-filed application completes the process (either positively or negatively), at which time the Examiner will look at your application again.

You will need to respond to such an Office Action with a legal brief and evidence, arguing that there is no likelihood of confusion between your mark and the prior registration/application cited.

Common Factors Considered:

  1. Similarity between the marks in appearance, sound, connotation, or impression.
  2. Relatedness of the goods or services.
  3. Evidence of actual confusion in the marketplace.
  4. Overlap in the channels of trade.

Even if the core differences in your mark seem obvious to you, the examiner may still find a potential overlap significant enough to warrant refusal.

Understanding Section 2(e)(1) Refusal – Merely Descriptive

A refusal under Section 2(e)(1) happens if the USPTO believes your trademark merely describes a characteristic, function, use, or ingredient of the goods or services. For example, trying to trademark "Crunchy Biscuit" for a line of biscuits would likely be flagged as merely descriptive. This kind of mark does not inherently distinguish your product from competitors' products.

There are several ways to respond and overcome such a Section 2(e)(1) refusal  (i.e., a descriptiveness refusal).  A trademark applicant can either (1) submit arguments and evidence to show that the mark is distinct (ie. a legal response brief), (2) amend the application to seek registration on the Supplemental Register (ie. a lesser protection/registration), or (3) demonstrate that the mark has acquired distinctiveness (ie. present evidence of at least 5 years of continuous use or demonstrating that consumers identify your mark with your brand/company).

Steps to Respond to an Office Action Refusal

1. Understand the Office Action

Carefully review the Office Action notice and understand why your trademark was refused. The USPTO trademark examiner will typically cite reasons for the refusal and outline any specific examples of confusingly similar marks or descriptive elements they identified. Break down these reasons to assess where the examiner's determinations might be overbroad or ripe for challenge.  Keep in mind that very often an Office Action may contain both substantive and non-substantive grounds.  Also, it is important to keep in mind that the 3-month period to "respond" to the Office Action is firm (and applies to the entirety of the Office Action).  While you can request a 3-month extension of time, you will need to pay a filing fee and file for an extension before expiration of the original 3-month time period. 

2. Research Relevant Caselaw

Legal precedent plays an important role in overcoming USPTO refusals. Research caselaw relevant to Section 2(d) (Likelihood of Confusion) and Section 2(e)(1) (Merely Descriptive) to see how similar refusals have been successfully addressed in the past. Look for decisions where applicants successfully argued differences in trade channels, customer sophistication, or weaknesses in the cited mark.

For example:

  • Likelihood of Confusion issues can often be countered by demonstrating distinctions in the marketplace or arguing that the referenced mark is weak (e.g., descriptive or commonly used in the industry).
  • Merely Descriptive Refusals can sometimes be challenged successfully by showing that your mark has acquired "secondary meaning" or by arguing that the examiner mischaracterized the descriptive nature of the mark.

3. Compile and Attach Evidence

To strengthen your response, consider attaching valuable evidence that supports your arguments. Examples of evidence include:

  • Distinctive Design or Usage: Show how your trademark has particular elements (font, graphic styling, or arrangement) that make it unique.
  • Market Data: Submit evidence demonstrating how your mark has been established in a way that distinguishes it for consumers.
  • Third-Party Registrations: Highlight similar marks that the USPTO has previously approved, supporting your argument that the refusal is inconsistent.

Detailed, credible evidence can make a strong impression when persuading the examiner to reconsider the refusal.

4. Consider Seeking a Co-Existence Agreement

For a Section 2(d) refusal, consider reaching out to the owner of the cited trademark to negotiate a co-existence or consent agreement. A consent agreement is a legal document where the owner of the registered mark agrees that your mark does not create confusion in the marketplace. This demonstrates to the USPTO that both parties see no conflict, making it more likely that the refusal will be withdrawn.

However, be cautious about how you initiate this conversation. It is vital to approach co-existence agreements with the guidance of an experienced trademark attorney.  Contacting the registration owner let's them know you are out there, and if they do not enter an agreement with you, they may take steps on their own to stop you from using the trademark/mark.

It is also important to take note that the USPTO is not bound to recognize the consent or co-existence agreement and withdraw the Office Action!  The USPTO's main concern is potential confusion among the public, so that it may not be satisfied that you and a competitor have reached an agreement, if the agreement does not (in the mind of the Examiner) protect the public. 

5. Consult an Experienced Trademark Attorney

It goes without saying, that having an experienced trademark attorney on your side helps the odds of overcoming a substantive Office Action refusal.  Responding to an Office Action is a nuanced process that relies heavily on strategy and understanding legal arguments and processes. Partnering with an experienced trademark attorney ensures that:

  • Your response is drafted professionally and persuasively.
  • You pursue the appropriate legal arguments (and avoid inadvertently weakening your case).
  • Your response meets USPTO formatting and procedural requirements, minimizing potential delays or fees.

Working with a professional dramatically improves your chances of overcoming the refusal and securing your trademark.

Food For Thought on Substantive Office Actions

Receiving a substantive ground of refusal within a USPTO Office Action can be but is not always the end of your trademark application—it's a challenge to overcome. Likelihood of Confusion and Merely Descriptive refusals may seem daunting, but with a clear understanding of the issues and a strategic approach, they can often be addressed successfully.  That is why it is good practice to consult with a knowledgeable and experienced trademark attorney who can asses the Office Action and explain your options as well as the potential possibilities or difficulties faced.

If you're uncertain about how to move forward, our team is here to help. Contact us today to schedule a consultation with one of our experienced trademark practitioners. Together, we'll work to protect your brand and bring your trademark to fruition.

Contact us!
Contact us about your trademark Office Action!

About the Author

Dragan Dan Ivetić

DRAGAN DAN IVETIĆ was born and raised in the Chicago suburbs, and wanted to become an attorney to help people from a young age.  He received a bachelor's d...

Comments

There are no comments for this post. Be the first and Add your Comment below.

Leave a Comment

Dragan Ivetic, Attorney at Law, LLC Is Here for You

Dragan Ivetic, Attorney at Law, LLC, is here to listen to you and help you navigate the legal system.

Contact Us Today

We offer consultations and we'll gladly discuss your case with you at your convenience. Contact us today to schedule an appointment.

Get in Touch

161 N. Clark St., Suite 1700
Chicago, IL 60601

Tel.: +1 (312) 216-5167
Fax: +1 (312) 815-2128

Europe/International:
Tel.: +31 (70) 870-0201
Fax: +31 (84) 839-8625

[email protected]