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Responding to Trademark Office Actions: Raising Specimen Refusals, Requests for Information

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

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Conducted on Tuesday, January 30, 2024

Recorded event now available

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This CLE course will guide trademark counsel on addressing refusals of registrations, from failure to function refusals, specimen refusals, suspension requests, to post-registration audits. The panel will offer strategies for counsel to overcome refusals that arise in the trademark application process.


Our experienced practitioners share their insights and strategies for responding to common issues during the trademark registration process and will also provide updates on the current USPTO rules.

From evaluating the validity of failure to function refusal, to responding to an examining attorney's request for information or submitting substitute specimens, the speakers will provide an in-depth analysis of the issues and options for consideration in counseling your clients on responding to office actions raising these issues. They will also advise about requesting the application be suspended or removed from suspension for further action.

Listen as our authoritative panel of IP attorneys discusses refusals of registrations, from substitute specimens to disclaimers and suspension inquiries. The panel will offer strategies for counsel to overcome refusals that arise in the trademark application process.



  1. Deadline to Respond
    1. Complying with different deadlines to respond to office actions
  2. Requesting suspension and responding to suspension inquiries
    1. Prior pending applications
    2. Cited registration is in a grace period for filing post-registration maintenance documents
    3. Awaiting issuance of a home country registration
    4. Institution or disposition of a TTAB proceeding
    5. Timing considerations
  3. Expungement and Reexamination Proceedings
    1. Basic bases for the new proceedings
    2. Deadlines to respond
    3. Practical considerations on when to file
  4. MyUSPTO Verification Requirement
    1. Attorneys
    2. Paralegals
    3. Sponsorship of Paralegals
  5. Requests for information
    1. Authorized by TMEP Section 814 to obtain information reasonably necessary for examination
    2. Responding when the goods/services are not yet offered
    3. Responding when the specimen was refused for reasons such as appearing to be a digital mockup
  6. Specimens
    1. Complying with the rule requiring URL and date the website was accessed
    2. Refusal based on lack of agreement between drawing and specimen (mutilation)
    3. Timing considerations for substitute specimens
    4. Option to amend to 1(b)
    5. Post-registration audit and new fee to delete goods/services
  7. Failure to Function/Common Phrase Refusal
    1. Recent decisions and best way to overcome such refusals


The panel will review these and other critical issues:

  • What are the primary 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?


Frisbee, Matthew
Matthew L. Frisbee

Leason Ellis

Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and...  |  Read More

Sullivan, Kelu
Kelu L. Sullivan

Kelly IP

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

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