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The Office Action: A Challenge or a Cinch?
Discussion Outline





I. The Refusal

A. Section 2(a) – Deceptive, disparaging or scandalous

B. Section 2(b) – Government insignia

C. Section 2(c) – Names, likenesses, signatures of living individuals (or a deceased president of the   U.S. during the life of the president’s widow)

D. Section 2(d) – Likelihood of Confusion

E. Section 2(e) – Descriptiveness


II. Other Issues Raised in Office Actions/Formalities

A. Disclaimers; claims of prior registration; translation/transliteration; meaning and/or significance of wording; letters and/or numerals in the mark; consent to register names, likenesses, signatures of individuals; acquired distinctiveness

B. Amendment of identification of goods and/or services (including addition of a class)

C. Specimen Refusal

D. New drawing of mark

E. Name or entity information

F. Supplemental register amendment

G. Concurrent use claim

H. Submission of a Signed Declaration


III. Responding to an Office Action

A. Preferred methods for responding to Office Actions (TEAS, mail, email, telephone)

B. Timing for filing responses

C. Forms and canned language/case citations

D. Consequences in failing to address issues raised

E. Failure to timely respond and mitigating harm

F. Petitions to revive

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