Overcoming an Office Action By Waiting for a Cited Trademark Registration to Expire

I’m sure you know the phrase “good things come to those who wait.” It can sometimes be that way when it comes to registering your trademark. Patience can be the key to good trademark prosecution.

Calculate the Expiration Date of the Cited Trademark Registration

Only active trademark registrations can form the basis for a Section 2(d) likelihood of confusion refusal. TMEP § 1207.01 (“Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a §2(d) refusal is an active registration.”). Therefore, one of the first things I do when the USPTO issues an office action citing a registration is calculate when the cited registration will expire if no one files the required maintenance documents.

In order to maintain an active registration, the owner must file a Section 8 Affidavit of Use within the fifth and sixth year after registration. On top of that, the owner gets a six month grace period to file the Section 8 Affidavit. This means that the last day to file the Section 8 Affidavit is six and a half years after registration. If nothing is filed by then, the USPTO will cancel the registration, which usually occurs about one to one and half months later.

Likewise, a Section 8 Affidavit and Section 9 Renewal must be filed between the ninth and tenth year after registration and every subsequent ten years. Again, a six month grace period is also provided for this. So if the cited registration has already been registered for 6.5 years, you’ll be calculating potential expiration based on this rule. So you could be looking at a potential expiration date of 10.5 years, 20.5 years, etc. from the date of registration if maintenance documents are not filed.

If the potential expiration date is within a year or so, I consider the chances of whether the owner of the cited registration might actually fail to file the required documents.

No Evidence That the Mark in the Cited Registration Is Still Being Used

The best indication that the owner of the cited registration won’t file the required maintenance documents is that you cannot find any evidence that the mark is still in use in the marketplace. Spend some time investigating the cited mark. Look at the file history and see what was submitted as a specimen previously. This can often lead you to where you should be looking for evidence of use. Is the corporate owner of the cited registration dissolved? Is the owner or product website down? What happens when you call the contact phone number seeking to order the product? Does a Google search turn up nothing? These are good indications that, if you can just make it to the expiration date, the owner will fail to file the maintenance documents, the registration will be cancelled, and it will no longer form a basis for a Section 2(d) likelihood of confusion refusal.

No Attorney of Record for the Cited Registration

Another promising indication occurs when there is no attorney of record listed for the cited registration. Now, this used to be much more promising than it is now because the USPTO used to not send out any reminders regarding the filing of maintenance documents. Unfortunately for purposes of this strategy, the USPTO does email courtesy reminders for Section 8 and Section 9 filings.  Nevertheless, it can still be a useful indication because often the email address provided is no longer valid, and the USPTO’s email reminder goes undelivered and unread.

Determine If You Can Delay Your Trademark Application to the Expiration Date

At a minimum, you know that you should have about one year from the first office action. Once the first office action is issued, you have six months to respond. After you respond to the first office action, you’ll receive a final office action, and you’ll have six months to respond to that. If the potential expiration date of the cited registration will occur within one year of the office action, you should be in good shape to find out if the required papers are filed before your final date to respond to the final office action. Otherwise, you’ll need to try to drag things out a bit. Of course, it only makes sense to try to drag things out if the potential expiration date is relatively close.

Waiting Until the Last Day to Respond to the Office Action

This one is obvious. If you’re trying to drag out your application, you’ll need to wait to the very last day to respond to each office action. No more needs to be said here.

Inserting New Issues to Avoid a Final Refusal

Ideally, you want to postpone getting a final office action as long as you can. One way to do this is to respond to the issued office action by inserting new issues that require the examining attorney to issue another non-final office action. Each one of these non-final office actions will buy you six months. There are different ways to insert a new issue, which are covered in the Trademark Manual of Examining Procedure (TMEP). One way is to amend your identification to make it broader, provided the previous office action did not advise against broadening the identification. TMEP § 714.05(a)(ii). There are other ways too – you’ll have to get creative with this if you need to delay things.

File a New Trademark Application

Your office action response didn’t convince the examining attorney to withdraw the Section 2(d) likelihood of confusion refusal. You delayed your application as much as you could, but you’re just not going to be able to stretch it out to the potential expiration date of the cited registration. In this circumstance, you do have the option of starting anew and filing a new trademark application. You could do this right away or you could wait until the potential expiration date of the cited registration to see if the required documents are filed. At the same time, you’ll want to make sure that no intervening applications have been filed that could also be cited against your new trademark application.

Concluding Thoughts

This blog post is focused on overcoming a cited registration by waiting for it to expire. This can be a worthwhile strategy when there is a legitimate reason to believe that the owner won’t file the required maintenance documents. Otherwise, it can amount to wishful thinking or a legal Hail Mary.

Also, the simple fact that the owner may have not filed the required documents to maintain the trademark registration does not necessarily mean that the mark is not in use and that the owner does not possess some prior common law rights. That is a separate assessment that needs to be made.

And finally, if you truly believe the mark in the cited registration is no longer in use, you could expedite the entire process by filing a petition to cancel the cited registration. Of course, doing so would be a different strategy, as it would not involve “waiting out” the cited registration.

About the Author

Bruno Tarabichi

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