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Is it hard to overcome a substantive office action?

Senior Trademark Attorney

It depends on the specific ground and how severe the issue is. Substantive office actions are harder to overcome than non-substantive ones because they require legal arguments rather than simple corrections.

If your mark is refused based on being confusingly similar to a previously registered mark, that kind of office action is often very difficult to overcome. One where the similarity is marginal, and the classes are clearly different, is more tractable. A descriptiveness refusal on a genuinely descriptive mark is hard to resolve without strong evidence of acquired distinctiveness; one where the mark is only arguably descriptive can often be argued successfully.

An honest assessment of the strength of the arguments available is the most useful starting point. Start with a free assessment of your office action with Trama.

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