Publication date: 20.06.2025
My name is Dmytro Dubograyev, I am the head and managing partner of a law firm
Introduction: Trademark registration in the United States often involves receiving official refusals from the United States Patent and Trademark Office (USPTO), known as office actions. Our firm has extensive experience in overcoming such objections, which may arise due to technical errors in applications as well as USPTO concerns regarding the registrability of the trademark itself.
United States Patent and Trademark Office (USPTO)
Case Overview
We routinely represent clients — primarily international companies, startups, and IT product owners — in responding to USPTO office actions issued after the initial examination of their trademark applications. Most commonly, the objections concern:
- Technical deficiencies in the application (incomplete goods/services description, classification errors, improperly submitted specimens, etc.).
- Concerns regarding registrability (descriptiveness, likelihood of confusion, genericness, etc.).
- Requests for additional clarifications or evidence supporting the distinctiveness of the mark.
Challenges
Typical challenges in such cases include:
- Preparing a legally sound and well-argued response to an office action within strict USPTO deadlines.
- Overcoming USPTO concerns related to potential conflicts with previously registered trademarks.
- Arguing against descriptiveness or genericness of the applied-for mark.
- Providing additional evidence of actual use of the mark in commerce.
- Ensuring full compliance with all formal and procedural requirements under U.S. trademark law.
Defense Strategy
We develop an effective legal strategy tailored to each specific case:
- Office action analysis:
- We thoroughly review the grounds for refusal and analyze USPTO practice in similar cases.
- We assess the actual chances of overcoming the objections.
- Preparing a well-argued response:
- We prepare legal memoranda analyzing U.S. trademark law and USPTO precedents.
- We present legal arguments demonstrating the lack of grounds for refusal.
- If necessary, we gather additional evidence of actual commercial use of the mark.
- Working with the client:
- We advise on possible options: narrowing goods/services descriptions, amending the application, adding disclaimers, submitting evidence of acquired distinctiveness (secondary meaning), etc.
- We coordinate the final strategy before submitting the response.
- Filing and follow-up:
- We promptly file responses with the USPTO.
- We monitor further communication with the examiner until a favorable decision is obtained.
Results
Thanks to the proper handling of office actions:
- A significant portion of applications successfully pass examination after our response is submitted.
- Clients obtain trademark registrations without the need to appeal to the TTAB or initiate litigation.
- Client resources are saved by resolving disputes at the administrative stage.
- Reliable brand protection in the U.S. market is secured for clients.
- USPTO refusals are successfully overcome on various grounds.
- Trademark registrations are obtained for clients from the USA, EU, Asia, Ukraine, and other jurisdictions.
- Timelines and budgets are preserved for the client.
- Registrations remain legally clean for future M&A, franchising, or litigation purposes.
Overcoming USPTO refusals is not an exception but a regular part of professional trademark registration practice in the U.S. Thanks to our deep knowledge of USPTO practice, thorough preparation, and precise legal arguments, our team delivers stable results, allowing clients to confidently build their brands in one of the world’s largest markets.
