Effective Office Action Responses can besome of the most difficult things to prepare and file for in all theTrademarks System; and if you've received an Office Action from the TrademarkOffice, you'll recognize it because it's going to give you a rejection of yourmark based on a substantive reason or a procedural reason.
Substantively, theexaminer is probably looking to make sure that your mark is going to beuniquely associated with your goods and services.
So, they tend to look at twothings: (1) The Similarities to other marks to make sure that consumerswill not be confused that your product is being sold by someone else.
The secondthing that they look for is (2) Distinctiveness.
One of the examples Iuse frequently is you can't open a hamburger stand called "Hamburgers" andexpect that the Trademark Office is gonna let you use that name exclusively.
Yeah, you can probably use it, but so can everybody else.
Why? It's just notdistinctive.
It's what we call generic.
You also might get a rejection based onsubmitting an (2) Improper sample.
One of the most common that I see is when an authortries to register a Trademark for their book title.
There's a prohibition on that.
However, you can get a trademark registration on a book series.
So, you gotto submit the Proper Samples in that situation and all others to make surethat your mark goes to registration.
Another reason you might get a rejectionis based on having an (3) Improper Description.
Now, the Improper Descriptioncould be of the samples and the Improper Description could be of the goods andservices that you're trying to sell using that name, and examiner's will makeyou bring your description of goods and services in alignment with your ActualUse or Intended Use in some cases.
However, that's dangerous.
And so, this is the totality of the majority, vastmajority, of the bases of rejection.
Now, especially when we're starting tolook at likelihood of confusion and something called AcquiredDistinctiveness, the responses to the Office Actions can become prettyexpensive.
In fact, we might have to obtain and submit affidavits fromindustry experts or obtain market surveys that the result of which wouldindicate that your mark has Acquired Distinctiveness.
For example in Dallas,Texas, there's a place where the Texas Rangers play baseball called The Ballpark in Arlington.
Well, The Ballpark in Arlington before it became famous, was just, you know, kind of a frankly descriptive name that's not distinctive.
However, because of lots of advertising and promotion, that name, "The Ballpark in Arlington" acquired distinctiveness.
And the people, who Iknow, who obtained the registration for that Trademark were able to showAcquired Distinctiveness through a market survey.
So, that's just one example.
If you have questions regarding your own Office Action Rejection and how toprepare a response, in particular how we can help you prepare a response to thatOffice Action, feel free to give us a call, and I look forward to seeing you in the next video.