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Office Action issues that are often handled without legal assistance? <\/div> ","content":"
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  1. Disclaimers <\/b>

    What is a Disclaimer? A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing. The Examining Attorney will almost always provide an acceptable Disclaimer in the Office Action and may also indicate how to respond. <\/p>

    Example disclaimer for \u201cAMERICAN FISHING POLES\u201d: <\/p>

    The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP \u00a71213.08(a)(i). A properly worded disclaimer should read as follows: <\/p>

    No claim is made to the exclusive right to use FISHING POLES apart from the mark as shown. <\/p>
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  2. Amendments to Supplemental Register and 2(f) Refusals <\/b>

    What is the Supplemental Register? The Supplemental Register is the secondary register of trademarks maintained by the United States Patent and Trademark Office. Trademarks on the Supplemental Register may amend to the Principal Register if the trademark has acquired distinctiveness. The Examining Attorney will recommend amending to the Supplemental Register if a trademark is descriptive but could possibly acquire distinctiveness. In such a case, the Examining Attorney will almost always indicate how to complete the amendment. <\/p>

    What is a (2(f) Refusal? A mark that is otherwise merely descriptive and does not warrant trademark protection, may have acquired distinctiveness requisite for trademark protection based on continued use over a five-year period. <\/p>

    Example 2(f) Refusal <\/p>

    SECTION 2(F) CLAIM OF ACQUIRED DISTINCTIVENESS SUGGESTED <\/p>

    The record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. \u00a71052(f), based on acquired distinctiveness. To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate: <\/p>

    The mark has become distinctive of the services through applicant\u2019s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement. <\/p>
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  3. Description Amendments \u2013 Goods and Service Listing: <\/b>

    What is a Description Amendment? If the Examining Attorney determines that goods and services listed do not properly apply to the trademark, he may offer an acceptable description. In such a case, the Examining Attorney will almost always indicate how to complete the amendment. <\/p>

    Example of Description Amendment: <\/p>

    Applicant may adopt the following identification, if accurate: \u201cFishing poles\u201d <\/p>
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  4. Specimen of Use Issues <\/b>

    The Examining Attorney may determine that the specimen of use provided in your application is not appropriate, and may request an alternate specimen of use. In such a case, the Examining Attorney will almost always indicate how to respond with an acceptable specimen of use. <\/p>
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  5. Logistical Amendments <\/b>

    If there are issues with an incorrect address, incorrect spelling, incorrect Corporate Type choice, the Examining Attorney will often point out the inaccuracy and allow the applicant to amend the application. In such a case, the Examining Attorney will almost always indicate how to complete the amendment. <\/p>

    Please note that this is not an exhaustive listing of possible bases for refusal <\/p> <\/li>\n\t\t<\/ol>\n\t\t\n\t\t\n\t\t\n\t\t <\/div> <\/div>"}