Why Apply for your trademark with Not Just Patents?

Most trademark applications are initially refused!

Not Just Patents can help to do it right and avoid refusals from the beginning

Initial refusal rates of

All USPTO trademark applications:

TEAS =86%,

TEAS Standard (new  name for TEAS RF)=83%,

TEAS Plus=66% (lowest refusal rate).













Refusals are easier to avoid than to overcome, TEAS Plus has the best chance of being approved.

(Refusal rates From USPTO.gov trademark dashboard for FY2019)


Why  Be First to File for a USPTO Trademark Registration?


• Trademark organization: United States Patent and Trademark Office (USPTO)

• Statutes: Trademark must have a live registration issued and active in the principal register

• Text-based marks: 1 - Typeset Word(s)/ Letter(s)/ Number(s); 4 - Standard Character Mark

• Image-based marks: 3 - An Illustration Drawing which includes Word(s)/Letter(s)/ Number(s); 5 - Words, Letters, or Numbers in a Stylized Form



Is your trademark important? Is it worth protecting? For many businesses, a trademark is one of their most valuable pieces of property. The tools to protect trademark rights take time to learn how to use properly. Experience matters. Not Just Patents has a good record of both protecting trademark applications from opposition and a good record of winning oppositions. The trademark opposition process requires knowledge of the rules and procedure.

Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action? We are very budget conscious. Saving an application filing date and the application saves money and time. We are able to fix a lot of refusals and overcome the descriptiveness refusals or identification problems or other common problems with trademark applications. Often after fixing problems, we usually go on to help the same businesses find better ways to protect other intellectual property assets such as other trademarks, patents and copyrights. A lot of repeat business is a sure sign that people are happy with our services. Call and ask us some questions and we can help you find ways to protect your rights in very budget conscious ways.

Can every trademark refusal or office action be overcome? Sometimes trademark applications have such huge problems with them, such as a strong likelihood of confusion problem with a competitive trademark, that no answer will overcome the refusal or should overcome. Getting refused and starting over with a better mark should be a much better strategy than getting sued for a likelihood of confusion or getting your web site shut down because it has a likelihood of confusion with someone else’s site.

The law that a trademark examiner uses to write a refusal  is based on the same trademark law that the owner of the other mark could use to sue  you. The trademark office and trademark examiners are trying to prevent future liability problems when they refuse applications; changes in trademark rules and procedure that affects applications come directly from lawsuits and other proceedings. The answers to refusals often require a knowledge of the appropriate strategy as well as trademark law. Experience matters.


If a trademark application is ‘Published for opposition’ does that mean it was opposed? Under U.S. Trademark law a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This does not necessarily mean that it will be opposed or has been opposed. The TESS (TESS FAQ) does not show if a mark has been opposed but the TSDR does show it at the

Status field where it shows as Status:  An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.


Looking for samples of Notice of Opposition or other trademark opposition samples?

TTABVUE at http://ttabvue.uspto.gov/ttabvue/ (Trademark Trial and Appeal Board Inquiry System) is searchable by  proceeding number, application number, registration number, mark, party, and correspondent. For instance, if one enters ‘Monster or some other party name in the ‘party’ field and clicks search, all proceedings that involved ‘Monster’ as a party come up in a chart with Proceeding Filing Date as the left-most column. Click on a proceeding number to select a proceeding. Proceedings that start with a 92 are cancellation proceedings and proceedings that start with a 91 are opposition proceedings.  (Proceedings that start with 8 are appeals or extensions of time to oppose.) At the bottom of the page for each individual search result for any  opposition or cancellation proceeding, document #1 (click on FILED AND FEE or the number ‘1’) is the opening pleading or the Notice of Opposition (opposition) or Petition for Cancellation (cancellation).

At the top of the document window, click on the printer icon to print or click on the download arrow to download the individual file being viewed.



How Often Are Trademarks Opposed?

Oppositions and Cancellations are Uncommonly Instituted But Are Real Threat Once Instituted

As reported in The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013.


The vast majority of published applications proceed directly to registration without any opposition. An opposition proceeding instituted for only 2.8 percent of 4.0 million published applications with prosecution event-data coverage in a recent USPTO study. For those applications no longer pending, the data indicate that the opposition was sustained [the trademark did not issue]  in about 44.8 percent of observations in which an opposition was instituted.

A cancellation proceeding is instituted for only about 1.1 percent of the 3.4 million registrations with prosecution event-data coverage. For those registrations with proceedings no longer pending, the data indicate that a cancellation was granted in about 44.9 percent of observations in which a cancellation proceeding was instituted.


Go Beyond Just Trademarkable To A Strong Mark: Aim Higher!

Do you know the answers to these questions?


These are all good questions to consider before adopting a trademark for use because if you are planning to succeed, it may be a good idea to be able to work that plan rather than abandoning it. [The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, about half of applications never register.]


All of the above questions involve fact-related answers. Knowing the rules is really important, being able to apply the rules to facts is even better. Call or email Not Just Patents for help:


Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.



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Because 66-86% of trademark applications are initially refused


Not Just Patents® LLC

1-651-500-7590    

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TMk®


Not Just Patents®

Aim Higher® Facts Matter

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1-651-500-7590    

(Calls are screened for ‘trademark’ and other applicable reasons for the call)




TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

TEAS application TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

 Examples of Disclaimers FREE Resources

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen?   

Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?


Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching


TBMP 309 Grounds Opposition/Canc.  

Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

   Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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Email: W@TMK.law. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us