What are the most common reasons for receiving a trademark office action?

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Written by Jan Buza

Co-founder of Trama

The most common reasons for receiving a trademark office action include:

  • Technical problems with the application, such as an error in intended owner details or submission of an insufficient specimen,
  • Problems with perceived descriptiveness of the mark (for US applications, this falls under Section 2(e) and its subsections), where the examiner argues the mark is merely descriptive of the goods and services, geographical location, a person's surname, or otherwise lacking in distinctiveness,
  • Likelihood of confusion (in the US under Section 2(d)), where the examiner considers the mark to be confusingly similar to another already registered trademark. However, it's worth mentioning that not all jurisdictions approach this issue in the same way. In the EU or UK, the examiner notifies the owners of previously registered trademarks about the likelihood of confusion but doesn't issue an office action or stop the registration. The burden of challenging the registration falls onto the notified trademark holders, who can use the opposition window to oppose the mark.

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