Once an application for federal registration of a trademark is filed, the United States Patent and Trademark Office assigns the application to one of its Examining Attorneys.

The Examining Attorney will determine if the mark in the application is likely to be confused with any other mark previously registered. To make this determination, he or she will analyze thirteen factors that were set forth in a landmark trademark case. The factors include how similar the marks are, how similar the goods are, and the extent of any potential confusion, among other factors.

The Examining Attorney may refuse registration based on a number of reasons. For example, the Examining Attorney may believe that the mark is:

  • Likely to be confused with a prior registered mark
  • Generic or merely descriptive
  • Primarily a surname
  • Geographically descriptive or deceptively misdescriptive


Should the Examining Attorney issue an Office Action refusing registration, the Applicant will be given six months to file a response. If the Applicant fails to reply within that six-month period, the United States Patent and Trademark Office deems the application abandoned.

Knowledge and experience in the practice of trademark law is essential to properly reply to an Office Action. If you have received an Office Action and would like our assistance in drafting and filing an effective reply:

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