How can I overcome a Section 2(a) refusal of my trademark application?

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Written by Igor Demcak

Founder & Trademark Attorney

The most common ground for refusal under Section 2(a) of the Lanham Act is the prohibition against registration of marks that consist of or comprise a disparaging, scandalous, immoral, or deceptive matter. Overcoming a Section 2(a) refusal can be challenging, but it's not impossible. To address it, you can consider the following options:

  • Gathering evidence and arguments to support your position. This may include any evidence that challenges the examiner's characterization of your mark, such as showing how the relevant consumer group perceives the mark.
  • Submitting consent of the affected individual or group stating the mark is not disparaging to them.
  • Submitting consent of an individual, group or institution for the use of the mark if the examiner uses the deceptiveness claim to argue the mark is "falsely suggesting a connection with persons, living or dead, institutions, beliefs, or national symbols".
  • Arguing the transformative nature or secondary meaning of the mark.
  • Amending the mark and removing the offensive element, if possible.

Section 2(a)'s prohibitions are defined very broadly, so before choosing the best course of action, it's important to understand the contents of your office action and which of the reasons apply to you. A trademark attorney can help you review the USPTO's concerns, present your options, and prepare a proper response on your behalf.

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