When a trademark application is filed in the United States, the United States Patent and Trademark Office (USPTO) examines the application to determine whether it complies with U.S. law. If it does not, the USPTO may refuse the trademark application. Below are the points applicants should bear in mind if their U.S. trademark application is refused:
Keep track of the deadline to respond to a U.S. trademark refusal
Not only in the U.S., but at all other intellectual property offices around the world, applicants are given a certain period of time to respond to a refusal notice. Specifically, U.S. law sets a fixed period within which applicants must respond to notices issued by the intellectual property office. Previously, this period was 6 months from the date of the refusal notice; however, from 3/12/2022, it has been shortened to 03 months from the date of the notice for the applicant to respond to a substantive refusal of a trademark application in that country. Shortening the deadline will shorten the examination time for trademark applications. If the applicant responds late or fails to respond, the application will be abandoned, the filing fees will not be refunded, and the trademark will not be registered. If, upon expiry of the deadline, the applicant needs more time to prepare the response, the applicant may request one 03-month extension of the response period and pay the corresponding extension fee. For applications filed in Madrid, the deadline to respond to a refusal notice remains 06 months from the date of receipt of the notice for timely consideration with no extension available. Therefore, applicants need to know precisely the deadlines allowed by intellectual property offices in order to respond on time.
Review the grounds for refusal of the U.S. trademark application
During substantive examination, common grounds for refusing a trademark application include: (i) the mark has a “likelihood of confusion” with a previously registered or previously filed mark; (ii) the mark is merely descriptive or deceptively misdescriptive of the goods or services; (iii) the mark is geographically descriptive or geographically misdescriptive. In addition, there may be other formal grounds, such as the description of the mark not matching the submitted specimen, the classification of goods or services not being specific enough to be classified in the relevant class, or incomplete information such as the applicant's email address, etc. Depending on the grounds for refusal, there will be an appropriate response strategy. However, to minimize the risk of the mark falling into the cases described above, applicants should research which signs are registrable as trademarks before filing. In addition, to avoid the mark being identical or similar to an earlier mark, applicants may also conduct a trademark search before filing. Furthermore, after receiving the USPTO's refusal, applicants can see on which grounds the USPTO has based its refusal. Once the grounds for refusal are identified, the applicant will consider possible ways to overcome them (if any). Where there are grounds to respond to and overcome the refusal, the applicant must submit a written response within the deadline mentioned above. Of course, these measures only reduce the risk of refusal and cannot completely eliminate the possibility of refusal.
Choose a representative to respond to a U.S. trademark refusal
If the applicant files through the Madrid System, there is no need to go through a U.S. representative at the time of filing. However, if the application receives a provisional refusal notice, the applicant must go through a U.S. representative to respond to the refusal. For applicants filing directly, it is mandatory to go through a U.S. representative/law firm both when filing and when responding to a refusal. This applies to all countries, not just the U.S., because intellectual property offices cannot contact and work directly with foreign applicants without a local representative. Furthermore, responses to refusals must comply with the practice and laws of each country, which local law firms understand better. When working through a law firm in the host country, we advise applicants to also engage a consulting firm in Vietnam to work with the U.S. representative, since law firms can communicate more easily in legal terminology, provide applicants with appropriate advice, and monitor status, deadlines, etc. to avoid anything being overlooked.
Have a backup plan in case the response to the U.S. trademark refusal is unsuccessful
Not all responses to refusals are successful, as the outcome depends on many factors such as the grounds for refusal, the evidence the applicant can provide, and the position of each intellectual property office. Therefore, applicants should not rely too heavily on a single trademark but should have other backup options in case the mark is finally refused. In addition, if the mark is not yet in use, applicants should not use or invest too much in unprotected marks, to avoid incurring costs and time to change the mark if it is finally refused.
