Q&A With David PostolskiResponding to Generic and Descriptive Office Actions
Alt Legal Team | February 11, 2021
Following our webinar with David Postolski, Who You Calling Generic?: Responsing to Generic and Descriptive Office Actions, we received a number of questions from our audience that David was gracious enough to answer in a video interview that you can watch here or read about below.
How do you respond to office actions that say the mark is descriptive and maybe generic but offer no evidence of genericism. Are we supposed to respond to that part?
It is an examiner’s duty under the TMEP that they provide evidence of descriptiveness and genericness. If you are starting with an office action that does not provide evidence of genericness, that definitely needs to be mentioned in your office action response. That being said, it’s likely that the examiner will read the response and just provide the evidence, so you will want to prepare for that and respond accordingly. When you respond, you should say: “There is no evidence of genericness, please provide the evidence.” and also include, “Should you provide evidence of descriptiveness or genericness, here are our arguments.” Then you can go on to say how the mark is not descriptive, rather, it is suggestive.
But by all means, the examiner must provide evidence of genericness. He cannot just be subjective in his feelings, which happens a lot. At the end of the day, the examiner’s claims must be backed up with evidence such as website, dictionary meaning, or something else.
If you know you are filing a descriptive mark would you rather file with a logo or agree to the supplemental register? And why?
The answer is based on strategy. I normally tell a client to file two applications. First, I recommend filing a word mark which may be deemed descriptive and the examiner will recommend it for the Supplemental Register. Second, as a backup plan, kind of hedging your bet, you file the descriptive word with the logo and you end up disclaiming the descriptive word element, but the logo is distinct and you can get the mark registered on the Principal Register that way. This depends on how descriptive the word is and what your logo is, but I usually recommend the client file both ways so you get the best of both worlds. Maybe the client can end up on the Supplemental Register for the descriptive part and end up on the Principal Register with a disclaimed descriptive word that also had a unique logo attached to it. Clients may worry that this strategy is double the price but it’s a strategy that can be very beneficial in the long run.
So you’ve gotten a lot of pushback even for the supplemental register? How do you combat that
Recently, a lot of examiners have been looking at descriptive marks and not even offering registration on the Supplemental Register. That’s been happening a lot and the examiners are relying on you to overcome a descriptive refusal which can be difficult. One way to combat this is to push back a little bit by calling the examiner and finding out why the mark at issue can’t be on the Supplemental Register. In the end, I would counsel my client that we need to get over the merely descriptiveness refusal because we aren’t even being offered registration on the Supplemental Register. If we aren’t able to overcome the descriptiveness refusal, then I recommend that we pursue the logo route mentioned previously. We can also consider letting the mark go, waiting some time to acquire distinctiveness, and then re-filing after five years under a §2(f) filing. Its very rare that I can’t get some sort of protection for a client. There’s always some way through.
Do you think it is better to file for the principal register because: 1) you never know if you get lucky, 2) it gives the examiner something to push on? Or is it better to file directly for the supplemental?
It depends on budget. If the client wants to pursue a registration on the Principal Register and is prepared for rejection, trying to fight it, and then ultimately filing on the Supplemental Register, great. Nevertheless, I would always try to file on the Principal Register. Yes, there’s some luck in terms of who your examiner is, but I always say to clients that, maybe you were “lucky” and got your mark through to registration on the Principal Register despite its weaknesses, but is that really “lucky”? Your mark is still susceptible to attack by other brand owners out there. It is very easy to invalidate your mark for the legal reasons your mark should have never gotten on the Principal Register in the first place.
After a trademark attorney conducts a search, he can weigh in on the weight of the descriptiveness of your mark. The attorney can advise as to whether it makes sense to pursue registration on the Principal Register, or if you should make the strategic decision to file on the Supplemental Register, or even if you should forego the application entirely, wait five years and try to acquire distinctiveness and re-file (an option I don’t ever really go for). It really depends on the type of client and how you want to counsel your client.
Can an owner who files a word mark submit proof of a logo with the name to overcome the descriptiveness rejection?
Generally speaking, the answer is yes. However, it really depends on what the logo looks like. If you can’t make out the words because the logo is stylized in a way that’s intertwined with the logo, the examiner will push back and say it doesn’t match. But if you have a corresponding second filing for the logo then the problem is solved. I wouldn’t rely on this too strategy too much. At the end of the day, when you file a descriptive word, knowing that it is the logo that is really what you’re using to try to overcome the objection, then my advice is file for the logo as well. Many examiners require that everything matches up precisely, and rightfully so, so it may be easier to file two separate applications.
Would you say parody of your mark also would be a positive for proving 2f?
When we are proving §2(f) there are a lot of factors to prove, so I would say that when a company is parodying their own mark because they’ve achieved a level of success, fame, and notoriety, that is probably poof that you’ve “arrived.” This is also true if another company is parodying your mark. By “arrived”, I mean that you’ve spent a lot of money on marketing, you’ve acquired distinctiveness, people know who you are, they know what you’re selling. I would absolutely use the parody of your mark to positively prove acquired distinctiveness. I would often say that being infringed upon is kind of a good problem to have because it means you’ve reached a level of success that people want to infringe you. They’re not going to infringe the company that’s not doing well! Using parody to prove the acquired distinctiveness categories is definitely a good strategy.
How do you deal with an office action where the examiner is ignorant on what makes hair curly. OA received stating that castor oil makes hair curly. My response would be “Genetics make hair curly” But that would be too rude. 🙁
This question relates back to the first question we addressed. Trademark examining attorneys should be providing you with evidence. They can’t provide personal opinions and conclusions nor can they read Wikipedia to provide evidence. You get a long way with examiners by not being rude, but I would point it out and provide the evidence that castor oil does not make hair curly. Provide evidence by sending an article or some research showing that genetics make hair curly. There are a lot of conclusionary statements in office actions that really should not be there and it is definitely your job to point it out, combat it, and provide evidence against those contentions.
Can you give us insight on “incontestable” marks? What does that mean and how do we advise our clients on that? Is that the same as acquired distinctiveness?
Incontestability is not the same as acquired distinctiveness, which you use to prove to the USPTO that your mark is registrable. Acquired distinctiveness includes five years of use along with other factors.
In the US, once you have had a registration for more than 5 years, you may file your Section 8 and 15 documents (Declaration of Continued Use and Declaration of Incontestability, respectively). Once you’ve filed these documents, your registration can only be contested based on certain reasons including fraud, mistake, and improper marking. The registration cannot be contested based on priority.
Trying to convince the PTO of suggestive vs descriptive worked fairly until the past couple of years. Any tricks for dealing with the horrible and just WRONG OAs coming out now?
This ties into some of the questions we discussed previously, and we are seeing a lot of wrong office actions for whatever reason. I believe that the threshold between suggestive and descriptive marks was much easier to prove in the past. I believe this is happening because of social media and digital marketing. There is lot of noise out there, so much connotation, and unintended meaning and ultimately this trickles down to examining attorneys, trademark attorneys, and applicants.
This is tough to deal with and if you are teetering on the line between descriptive and suggestive, which is something you probably would have already known and discussed with your client, it’s important to work with your client to ensure that they have evidence showing that the mark is suggestive. Assuming the mark is use-base, work with your client to prepare evidence such as marketing tactics, customer feedback, or surveys. By preparing this sort of evidence, you’ll have the evidence you need to argue the wrong office action.
The fact of the matter is we have to respond to the office action and provide evidence that the mark at issue is suggestive and not descriptive. It’s our burden to prove this and we need patience with examiners who may get it wrong.
I’ve refiled applications in new classes or with new specimens or after client got better marketing. It’s a living, breathing process. Rejections can be overcome with the right strategy, but everything needs to be disclosed to the client up front.