USPTO Office Action Response

Initially, most applicants aim for registration on the Principal Register, but the Supplemental Register offers an alternative. Descriptive marks, surnames, or geographic terms may find suitability on the Supplemental Register. In instances where the USPTO perceives a mark as fitting this category, it may propose transferring the application from the Principal to the Supplemental Register.
Benefits of registration on the Supplemental Register include:
1. Use of the ® symbol.
2. Notification to others of existing mark usage.
3. Ability to file trademark infringement suits in federal court.
4. Prevention of others obtaining similar marks from the USPTO, even on the Principal Register.

However, there are limitations. A mark on the Supplemental Register may not be presumed valid in lawsuits. It typically lacks authority to prevent counterfeit goods importation and cannot attain incontestable status like Principal Register marks. Nonetheless, if a mark develops secondary meaning, its owner can reapply for Principal Register acceptance, even if initially filed on the Supplemental Register.

A trademark often comprises multiple words, with some describing the product or being merely descriptive. While registering the mark as a whole is common, the USPTO may challenge the attempt to claim individual terms. Consequently, companies may choose to disclaim these words without forfeiting the registration of the entire mark, or the USPTO may request this action after the application.

The disclaimer does not alter the mark's unregistrable part or its visual representation. Instead, it signals to the USPTO database that the company is not asserting exclusive rights to that particular aspect of the mark. Failure to disclaim may lead to rejection. The USPTO might issue an Action Letter requesting the disclaimer of unregistrable parts, potentially causing application delays. Responding to such a letter typically involves either agreeing with the USPTO's request or contesting it. Given the legal implications concerning the mark's protections, consulting an attorney upon receiving an Action Letter is advisable.

The USPTO offers examples to illustrate situations where a disclaimer is likely necessary:

1. Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
2. Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
3. Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole.”
4. Informational Words: Disclaiming designations like product size or founding year, typically applicable to logo registrations.
5. Well-known Symbols: Disclaiming the “$” for a financial services company.
6. Misspellings or "Telescoped Words": Disclaiming “Super” and “Rinse” from “Superinse Cleaner,” or “quick” from Jay’s Quik Print.
7. Foreign Wording: Disclaiming the translation of a foreign word if it represents a generic or descriptive term, such as disclaiming “Rouge” from “Gala Rouge” for wine, as “Rouge” means “red.”
8. Multiple Words Disclaimer: Disclaiming interconnected words together, such as “Pizza Parlor” from “Pete’s Pizza Parlor.”

Reportedly, over 60% of trademark applications encounter some form of Office Action. This statistic encompasses filings from various sources, including lawyers, individuals, and third-party service.

Typically, the deadline for responding to the USPTO Office Action is three months from the date of receiving the notice.

In most cases, if an applicant fails to respond to an Office Action within three months of receiving the notice, the USPTO considers the application abandoned. This means the USPTO filing fee is usually not refunded, and any future attempts to register the trademark will likely require the applicant to restart the process, including paying new USPTO filing fees.