What is the difference between substantive and non-substantive reasons for trademark dismissal?

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Written by Igor Demcak

Founder & Trademark Attorney

The distinction between substantive and non-substantive reasons for trademark dismissal generally lies in whether the grounds for refusal or dismissal are related to the core requirements and characteristics of the mark itself (substantive) or if they involve procedural or administrative issues (non-substantive).

Substantive reasons include issues with the mark's distinctiveness, a similarity conflict with other already registered trademark(s), inclusion of prohibited symbols, perceived deceptiveness or violation of public policy, etc. Overcoming them often involves submitting legal arguments and additional evidence or amending the application.

Non-substantive reasons include administrative and formal issues, such as errors in the intended owner details or missing payment. Correcting them is usually pretty straightforward but can unnecessarily prolong the trademark registration process.

If you are not sure which type your office action falls under (or, more importantly, what to do about the issues mentioned in the office action), it's recommended to consult a trademark attorney who can help you understand the office action and take appropriate steps to save your application.

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