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My self-filed trademark was refused: save it or refile?

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Save it when the problem can be fixed or argued inside the application you already have. Refile only when the defect can't be cured by amendment, because a new application costs a new $350 per class, gives up your filing date, and will run into the same refusal if the name itself is the problem.

That's the short answer. The longer one depends on what was refused, whether the refusal is final, and how much time is left on the clock.

Start with what the refusal actually says

"Refused" covers a lot of ground. Before you choose a path, sort the letter into three questions.

Is the whole mark refused, or only some goods? A refusal can hit every class or just a few items. If only part of your list is the problem, you may be able to delete those items and move the rest forward.

Is it a requirement or a refusal? Requirements ask you to fix something, like a vague description. Refusals reject the mark on a legal ground, like likelihood of confusion or descriptiveness.

Is it final? A nonfinal Office Action is the first round. A final Office Action is the examining attorney's last word during examination. You still have options after a final, but fewer.

Whatever it is, the deadline is three months from the issue date, with one three-month extension available for a $125 USPTO fee, filed before the original deadline and before any response.

When saving the application is the better bet

Your existing application has one thing a new one can't: its filing date. In the US, that date matters if someone else files for a similar name after you. A new application starts the line over.

Saving it usually makes sense when:

  • The problem is a fixable requirement. Narrowing a description, adding a disclaimer, or clarifying the owner's details are all done inside the application.
  • The specimen was rejected. You can usually submit a substitute, argue the original was fine, or switch the basis to intent to use. I go through that in the article on proof of use.
  • There's a real argument against the refusal. A likelihood of confusion refusal can sometimes be overcome by showing the marks differ in overall impression, the goods aren't related the way the examiner assumed, or the shared word is already used by many others in your field.
  • Only some goods are the problem. Dropping the refused items can let the rest register.

When refiling is the honest answer

Some mistakes can't be amended away. When one of these is the real problem, money spent arguing the old application is usually money lost.

  • The wrong owner filed. If you filed in your own name and your LLC owns the brand, or the reverse, the USPTO treats that as a defect you can't fix by switching the owner. I explain why in the article on where DIY applications go wrong.
  • The description is too narrow. You can narrow a description after filing, but you can never broaden it. If you described a product line you've since outgrown, the fix is a new filing.
  • The drawing is wrong. If you filed a logo you've since redesigned, or stylized lettering when you really wanted the words, the mark generally can't be changed in a way that materially alters it.

When neither path will work

Here's the part nobody likes. If the refusal is likelihood of confusion and the cited mark really is close to yours on related goods, refiling the same name doesn't help. The new application lands with a different examining attorney, who searches the same register and finds the same registration.

In that case your real choices are:

  1. Answer the refusal with the strongest argument the facts allow.
  2. Approach the owner of the cited mark about a consent agreement, which the USPTO weighs as a factor.
  3. Narrow your goods so they move away from the other owner's.
  4. Change the name.

I go into those options in the article on how different a name has to be. Sometimes changing the name now is cheaper than defending one that's going to keep running into the same wall.

The money, side by side

Saving the application:

  • USPTO extension fee, if you need it: $125.
  • If the refusal is final and you appeal: $225 per class to the Trademark Trial and Appeal Board, plus the work of writing an appeal brief.
  • Legal fees, if you hire help. At Citrus Legal, procedural responses start at $425 and substantive responses start at $1,600, flat, quoted in writing after I read the letter.

Refiling:

  • USPTO base application fee: $350 per class, again, plus any surcharges for custom descriptions.
  • A new filing date, and many more months in the examination queue.
  • Legal fees, if you hire help. At Citrus Legal, one mark from search to filing is $2,600 flat, or three payments of $950, plus the USPTO fee.

The fees you already paid on the refused application aren't refunded either way.

Odds, honestly

I won't tell you what your chances are without reading your letter, and nobody should. What I can tell you is that self-filed applications do worse than attorney-filed ones. In the Gerhardt and McClanahan study from the University of North Carolina, applications filed by attorneys were approved about 82% of the time, compared with about 60% for self-filed ones.

Most of that gap comes from decisions made before filing: the owner, the description, the basis, the search. Every application I've filed for a client so far has been approved, with zero refusals. That record comes from the search, not from luck.

How to decide this week

  1. Write down the deadline.
  2. Sort every issue into fixable, arguable, or uncurable.
  3. If everything is fixable or arguable, protect the filing date and answer it.
  4. If anything is uncurable, plan a new filing and decide whether the old one is worth answering in the meantime.
  5. If the refusal is about the name itself, decide whether it's worth defending before spending on either path.

If you want a second set of eyes on a refusal, the Office Action response page shows how I take over self-filed applications, and if refiling is the right call, the start page walks through a new filing.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

When you are ready to own it

One mark. One flat fee. One attorney.

The search, the written opinion, the federal application and procedural Office Actions, for $2,600 or three payments of $950. Nothing is filed until you approve the search. If I call your mark low risk and the USPTO refuses it, I file again at no attorney fee.

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