Back to Office actions

How can I overcome a substantive office action?

Written by Jan Buza

Co-founder of Trama

The approach depends on the specific ground raised.

For likelihood of confusion: argue that the marks are not confusingly similar based on their visual, phonetic, and conceptual differences; demonstrate that the goods and services are sufficiently different; narrow the goods and services list to remove the overlapping area; or obtain a consent agreement from the owner of the cited mark.

For descriptiveness: argue that the mark is suggestive rather than descriptive, or submit evidence of acquired distinctiveness through long and exclusive commercial use. Amending the application to add a distinctive visual element may also help in some cases.

For other substantive grounds: the available options depend on the specific refusal. Some (such as a living person's name) can be resolved by submitting consent; others (such as a flag inclusion) may require removing the prohibited element from the mark.

Start with a free assessment of your office action with Trama.

Related questions

Airbnb versus Hairbnb: How trademark protects against unexpected threats

Taking a creative spin on an already established and renown brand may seem as a good strategy for devising a name for a startup company but it may backfire. This article summarises one of the contemporary cases in this area, revealing that Airbnb’s trademark protects the company against unexpected threats.

NBA stars are using NFTs to expand their personal brand

According to the Growth Trend Analysis and Forecast Report by MarketDecipher, the sports memorabilia market size will be US$26 billion in 2021, with NFT sports collectables currently estimated at US$1.4 billion, which is estimated to double its market size at a 100% growth rate and reach 2.6 billion in 2022. As a result, many professional NBA athletes such as Kevin Durant and King James LeBron are not missing an opportunity to further develop their personal brands by offering fans new ways to connect with them through ownership of unique digital assets.

Trademark perspective on NFTs: New, Fabled and Thrilling

$40 billion estimated market value and 1,000+ fold increase in the number of trademark applications. Those are some of the breathtaking facts about non-fungible tokens (NFTs) that have captured substantial attention from the public, regulators, established brands and last but not least, IP specialists. This article presents a trademark perspective on NFTs, exploring this novel phenomenon and emerging issues.