The Challenge: Refusal of trademark application
Our client came to us after receiving an Office Action, the U.S. Patent and Trademark Office’s formal refusal of a trademark application. The Office Action rejected the client’s application on the basis of a prior registration containing a word in common with our client’s mark. The client needed a strategy to overcome the refusal and get a trademark registration to protect its growing brand.
The Solution: In-depth analysis of the application
AEON Law knows trademarks, and we enjoy educating our clients about the registration process. Using our flat fee structure for trademark registrations enables us to take the time to explain brand strategies over the lifecycle of the brand.
We also understand the registration process and are able to proactively and effectively communicate with the USPTO. In this case, we reviewed not only the Office Action, but also the USPTO’s search strategy for locating conflicting marks and the history of the registration that was cited against our client.
The Outcome: Broader registration
In this case, the best and most cost effective way forward was to file a new application for a mark omitting the conflicting wording. As a result, the client gained even broader registration that comprehensively protected its brand.