Trademark Office Action Response
(Likelihood of Confusion)

Summary

This trademark office action response template can be used by a trademark applicant to respond to an office action refusing registration of a proposed mark based upon likelihood of confusion in view of a prior registered mark. See 15 U.S.C. § 1052(d). This form includes practical guidance, drafting notes, and optional clauses. This response assumes that the applied-for mark (1) is a standard character word mark, (2) for goods, (3) is in use, and (4) the cited registrant's use predates your client's first use of its mark. If your client's mark is in special form, involves services, has not been used, or involves additional grounds for refusal, revise this response accordingly. If your client's first use of its mark predates registrant's first use of its mark, you may want to explore cancellation of the conflicting registration or negotiating a coexistence and consent to registration agreement with the registered user. For further background on responding to a USPTO Section 2(d) claim of likelihood of confusion, see the Likelihood of Confusion Refusals section in Trademark Examination Process. Additional related resources include Trademark Searching and Clearance Resource Kit, Trademark Examination Process, Likelihood of Confusion Resource Kit, TTAB Decision Tracker: Likelihood of Confusion, TTAB Litigation: Cancellation Proceedings ,and Co-existence Agreement (Trademark). Complete responses are due within three months of the date of the office action (unless the office action sets an earlier period to respond). Pursuant to rule updates by the Trademark Modernization Act (TMA), as of December 3, 2022, trademark applicants have three months (with an optional three-month extension for a $125 fee), instead of the prior six months, to respond to office actions. This TMA update does not apply to post-registration office actions, which will maintain the current 6-month response period. See, e.g., 89 FR 58660. The deadline for responding to office actions for Madrid Protocol section 66(a) applications will also remain at six months, given the additional processing time these applications take. For more on the reduced 3-month response deadline, see additional USPTO guidance here. If you do not respond by the deadline, the application will be deemed abandoned (i.e., removed from the USPTO docket of pending applications), and your client will lose any priority benefit based on the application's filing date. TMEP § 711. But, if a failure to timely respond is unintentional, you may file a petition to revive the application. See 37 C.F.R. § 2.66(b). Responses to office actions must be filed electronically through the Trademark Center. See 84 Fed. Reg. 37081 (July 31, 2019). For more information on TEAS, see Trademark File History (TSDR) and Trademark Electronic Filing System (TEAS) Basics. Response forms for non-final office actions may be accessed via Trademark Center. Your office action should also contain a link for the appropriate Trademark Center form. For summaries of relevant Trademark Trial and Appeal Board (TTAB) decisions, see TTAB Decision Tracker: Likelihood of Confusion. For additional resources on the trademark registration process, see Trademark Registration and Maintenance Resource Kit.