What Are My Options If My Trademark Office Action Will Be Denied?

Negotiate With The Owner of the Conflicting Mark

A consent to use agreement or coexistence agreement is routinely used to secure trademark registration when an application is refused due to a likelihood of confusion with a prior pending or existing registered mark. Consent or coexistence agreements offer a settlement-friendly resolution that avoids litigation and gives an applicant consent to use an existing mark. Despite the benefits, these agreements may not always be the best course of action for several reasons: 1) you risk tipping the other party to the fact that you are infringing on the existing mark; and 2) the owner of the existing mark will have the upper hand (more bargaining power) in negotiating. Additionally, these agreements can be complex and should not be entered into lightly.

File a New Application to Modify a Pending Application

Filing a new application to modify your pending application is another recourse. For example, you can add a design to a mark that originally contained only words. However, this would amount to a substantive change that will require the filing of a new application with the U.S. Patent and Trademark Office (USPTO). In this situation, filing a request for abandonment (withdrawal) for the prior application is recommended to put the USPTO on notice of your intent to abandon the prior mark.

Research Currently Registered and Conflicting Trademarks

An extensive search of currently registered and conflicting marks may offer an opportunity to take over a mark that has not been maintained with the USPTO. To maintain a trademark registration, an owner must keep a registration alive by filing required maintenance documents at regular intervals. The first filing must occur between the 5th and 6th year after the registration date. If the owner fails to timely file, the trademark registration will be cancelled and cannot be revived or reinstated. If you respond to an Office Action or file an application during this time frame, you may be able to take the existing mark.

Continue Using the Trademark

The most straightforward option is to simply do nothing and continue using the mark. However, this is a risky choice as it could result in a trademark infringement lawsuit in the future.

Although there are several options to avoid trademark application refusal, your next step should be carefully considered and planned with an experienced trademark attorney. Please contact us for a consult to discuss the best course of action for your situation.