USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
4.10 Refusal of Registration Trade mark applications can be refused for a number of reasons. If refused, the PTO will issue an Office Action. The applicant will have three months to respond and submit arguments against the refusal; however, the applicant can pay a fee and extend this deadline by three months. Common refusals include: Likelihood of Confusion With Prior Registered/Applied-for Marks The PTO can refuse an application if it finds the mark is confusingly similar to a mark covered by a prior registration or application. – Applicants generally argue against confusion or submit a letter of consent from the owner of the blocking mark. Descriptiveness The PTO can refuse an application because the mark describes a feature, function, characteris - tic, quality, etc of the goods or services. – Applicants often argue the mark is suggestive (see 2.2 Essential Elements of Trade Mark Pro- tection ) or has acquired distinctiveness through longtime use or a survey etc. – The applicant can also amend the application to the Supplemental Register. See 4.2 Trade Mark Register . Primarily Geographically Descriptive The PTO can refuse an application because the mark is primarily descriptive of the geographic location from which the goods or services origi - nate. The PTO can also refuse an application if it is deceptively misdescriptive of the geographic origin of the associated goods or services.
Whether an application can be changed, amend - ed or corrected depends on the error. Some common errors and the ability to correct are outlined below: • Information about the owner, such as the state of incorporation or address, is correct - able, but an incorrect owner is not. • A mark may be amended if the amendment results in a “non-material” change that does not change the overall impression of the mark. • Descriptions of the goods and services can be amended, but not if the amendment broadens the description. • First use dates are generally correctible to an earlier date. 4.8 Dividing a Trade Mark Application It is possible to divide a trade mark registration if the owner assigns one of the classes of goods or services to another. This also requires filing the assignment, filing a request and paying a fee. An application may be divided by paying a fee and filing a request where the application is filed based on an intent to use and the applicant can prove use for some goods but not for others. Division is also possible by filing a request to overcome a refusal where the examiner has refused the application as to some goods but is willing to allow the application as to others. 4.9 Incorrect Information in an Application Minor inadvertent or good faith mistakes may be correctable, as outlined in 4.7 Revocation, Change, Amendment or Correction of an Appli- cation .
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