Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner

Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Deceptiveness, and More

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Tuesday, September 12, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance for trademark counsel responding to Trademark Office Actions on the key considerations and potential alternative responses. The panel will offer strategies for counsel to overcome PTO objections that arise in the trademark application process.


With solid planning, trademark counsel can avoid some issues that cause a trademark application to be rejected or subject to PTO objections, but if the USPTO is not satisfied, it will issue an office action listing grounds for refusal.

When responding to a Trademark Office Action, counsel must consider the impact of statements submitted, the evidence available to support the mark, the PTO’s grounds for refusal, and the potential for clarifying or limiting the mark.

Counsel must then strategically plan and implement a successful approach to overcome the PTO’s objections. These options may include investigating cited registrations, filing cancellation actions, approaching third parties for a consent and coexistence agreement, gathering evidence to demonstrate the relatedness (or not) of certain goods and services, gathering evidence to support a claim of acquired distinctiveness, etc., depending on the refusal.

Listen as our authoritative panel discusses what trademark counsel must consider when presented with a Trademark Office Action and ways to overcome rejections or refusals. The panel will also discuss the areas where many problems occur and offer tactics for surmounting these problems.



  1. Strategic considerations for counsel before responding to an office action
  2. Overcoming trademark office rejections
  3. Key problem areas to anticipate and prepare to respond and follow up
  4. Strategies for overcoming issues outlined in Trademark Office Actions


The panel will review these and other key issues:

  • What are the key considerations for trademark counsel when responding to an office action?
  • What are the areas that have proven to be red flags for the PTO?
  • What other strategies should counsel implement to increase the likelihood of mark registration after the office action is issued?


Han, Erica
Erica L. Han

Ropes & Gray

Ms. Han advises consumer branded product companies in relation to global brand strategy, trademark clearance and...  |  Read More

Strickland Ricketts, Allison
Allison Strickland Ricketts

Fross Zelnick Lehrman & Zissu

Ms. Rickett’s practice focuses almost exclusively on U.S. trademark selection, clearance, registration,...  |  Read More

Sullivan, Kelu
Kelu L. Sullivan

Of Counsel
Kelly IP

Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in...  |  Read More

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