How Do You Overcome Trademark Rejection?

Like other legal processes, the application to register a trademark is often confusing and time-consuming. That’s why a lot of individuals have hired their respective trademark lawyers. Since their expertise on the subject is essential to understand the correct actions.

However, not every application successfully receives sweet approval from the USPTO. In this case, you might have been struggling to come up with the appropriate trademark office action response to remedy the situation.

How does the application process work?

For the initial registration, a form would be given to each applicant where you’ll be required to provide the following details:

  1. Your contact information
  2. Your legal status. Let them know if you’re applying as a business entity or person.
  3. The trademark’s nature. Is it a slogan, word, motion/sound, or design?
  4. A description of the trademark
  5. The kind of business that the trademark would be associated with. Is it a goods business or services?
  6. The description of the said goods/services
  7. A specimen of the mentioned goods/services
  8. A statement detailing the first use of the trademark both for commercial and general purposes
  9. An indication of the Intent-to-Use included in the trademark application form.

You would then have to submit the form with your application fee, which could vary depending on the USPTO guidelines. Typically, you would be charged $225 per class of goods, but there are occasions where you would be demanded to cover $275.

Watch out for the six months time frame

Things get busy when you’re part of the USPTO employees. Thousands of applications are received by the office every day, so it’s no wonder that they can’t constantly assist you regarding the issues in your rejected application.

When the USPTO issues a rejection, they detail the reasons behind the decision. There might be a procedural or substantive legal issue, which you could deal with alongside your trademark lawyer.

As the rule of thumb, the office gives the applicant six months to submit their response. Your attorney would have to work with you to determine the scope of the preparation and the amount of time needed for drafting a response.

If you found out that the last time frame is insufficient to perform the necessary steps, you could request a time allowance. However, this comes with an extra fee on your behalf.

Three steps to ensure a smooth transaction

The USPTO might have been generous with giving you a time allowance in addressing legal concerns, and we recommend that you stick with the three steps we’ve listed below as not to put it to waste.

Be informed

Ignoring the small details could lead you to a grave situation. And who knows the policies of USPTO other than their employees?

Approaching a staff member helps you get an idea of the process and have in-depth knowledge about the concerns in your application. Although they can’t answer all of your questions like your attorney, they’re still capable of giving you bits of advice on the best course of action.

They could also shed light on the details that confuse you, especially if it involves technical or administrative tasks.

Wait for your lawyer.

Sometimes, people would skip over this step because they’re tight on money. 

We assure you that even though the process looks simple, dealing with a government office always comes with legal ramifications.

If money is your primary concern, kindly remember that you’ll be losing hundreds or even thousands of dollars if you messed up with the legal sections of your application.

This scenario doesn’t have a DIY solution. Instead, it’s a good move to ask a professional so that you could go through the process with ease.

Address the concerns through TEAS

The Trademark Electronic Application System (TEAS) manages all responses from rejected applicants.

Once you’ve become eligible to process your application through TEAS, your attorney would be able to upload all your correspondences using it.

After that, your party would have to wait for the decision of USPTO, which could either lead you to abandon your application or file for a new one.