followers 1 popularity
4
following 1

followers  view all

following  view all

Groups
EsquireTrademarks is not in any groups
EsquireTrademarks

How to Respond to Trademark Office Action – Prior-Filed Application Rejection

Feb 18th 2020 at 10:54 AM


How to Respond to Trademark Office Action – Prior-Filed Application Rejection

TESS Screenshot

A Prior-Filed Application notice means that another pending trademark application is blocking yours. Someone else filed an application before your application date, and the earlier application is similar enough to yours to be a grounds for rejection.

What Does a Notice of Prior-Filed Application Mean?

Simply put, a Prior-Filed Application notice means that another pending trademark application is blocking yours. Someone else filed an application before your application date, and the earlier application is similar enough to yours to be a grounds for rejection.  In this article, I refer to “Prior-Filed Application” and “blocking application” interchangeably, because that’s what it is.


But the Rejection Isn’t Final Until the Prior Application Registers


Prior-filed applications don’t always become trademark registrations. If the blocking application is denied, opposed, or abandoned, the prior-filed application rejection must be lifted.  A prior-filed application must register as trademark to be grounds for a valid rejection. The prior filed (blocking) application may not register for various reasons.  Some examples include express abandonment by the applicant, involuntary abandonment for not responding to office actions, and a final rejection for various grounds.   The blocking application may get opposed by a third party in a Trademark Trial and Appeal Board (TTAB) opposition proceeding.


How to Respond to an Office Action With a Prior Filed Application Notice?


For more information on how to respond to an office action with a prior filed application notice, visit our informative article here.


Disclaimer:  This information is for educational purposes, and is not intended to be legal advice. Each case turns on its own facts.  Please consult with an experienced trademark attorney.


EsquireTrademarks.com – Online Trademark Attorneys – What We Do:

  • Our trademark attorney, prepares and files trademark applications for clients throughout the United States and abroad.

  • We prosecute and defend trademark infringement and unfair competition actions in the Federal Courts throughout the United States and abroad.

  • We also prosecute trademark office actions and appeals before the United States Trademark Office.

  • We handle internet based trademark disputes and trademark, DMCA, and copyright takedowns.

  • We draw on our experience as trademark litigators to guide you through the trademark process.

  • We support businesses, law firms, and individuals by providing top notch legal services in intellectual property matters.





0 comments
Please to comment

sign in

Username
Password
Remember Me


New to IM faceplate? join free!

Lost Password? click here