How should a trademark applicant respond when notified by the U.S. Patent and Trademark Office that the mark has been refused registration?
An entrepreneurial client of Donatelle Law PLLC was in that very predicament.  The company’s mark was initially refused on a “likelihood of confusion” basis and the refusal came in the form of a comprehensive Office Action letter from the Trademark Examining Attorney.  The client had six months to file a response, but that task appeared daunting, indeed.
Some applicants might choose not to respond, losing their non-refundable $325 filing fee in the process.  However, this client wisely consulted with an attorney professional.  The company had too much at stake because the mark factored heavily in its marketing and expansion plans.
Federal trademark applicants can be denied on the basis of form and/or substance.  In some cases, applicants CAN overcome an initial refusal by timely responding to Office Action communications.  Sometimes, the Examining Attorney just needs additional information or guidance to help sort out the issues.
In this case, Donatelle Law PLLC filed a carefully crafted Response describing how the newly applied-for mark was distinguishable from a previously registered mark. Documentary evidence from the web supported the argument.
The effort paid off.  Six months later, the client is the proud recipient of a gold-stamped certificate of registration, achieving the benefit of federal trademark protection in a growing enterprise.