How can I prevent USPTO from dismissing my trademark application?

Photo of Igor Demcak

Written by Igor Demcak

Founder & Trademark Attorney

To increase the chances of preventing the dismissal of your trademark application by the United States Patent and Trademark Office (USPTO), there are several important steps you can take:

  • Conduct a Comprehensive Trademark Search: Before filing your application, it's crucial to conduct a thorough trademark search to identify any existing marks that may conflict with yours. This helps avoid potential issues and objections during the application process.
  • Choose a Distinctive and Strong Mark: Select a mark that is unique, distinctive, and not likely to be confused with existing trademarks. Fanciful, arbitrary, or suggestive marks tend to have a higher chance of being approved compared to descriptive or generic marks.
  • Provide Sufficient Specimens of Use: If your mark is already in use in commerce, ensure that you submit appropriate specimens of use as evidence to demonstrate the mark's association with the goods or services. Follow the USPTO guidelines for acceptable specimens.
  • Respond Promptly to Office Actions: If the USPTO issues an office action, carefully review it and respond within the specified timeframe. Address any objections or requirements raised by the examiner in a comprehensive and persuasive manner. Seek the assistance of a trademark attorney if needed.
  • Demonstrate Distinctiveness: If your mark is initially deemed descriptive, generic, or lacking distinctiveness, you may be required to prove acquired distinctiveness or secondary meaning. Provide evidence such as consumer surveys, advertising efforts, sales figures, or media recognition to establish the distinctiveness of your mark.

Remember that each trademark application is unique, and the specific requirements can vary based on the circumstances. Following these steps and seeking professional guidance will help you navigate the trademark application process and increase the likelihood of a successful outcome.

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