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Most attorneys filing trademark applications prefer to avoid office actions in the United States Patent and Trademark Office.  After all, receiving an office action means that the trademark application has been rejected.  Sometimes, the remedy and solution to the rejection is fast.  Sometimes, the remedy takes a long time to overcome.  This is why a trademark search is necessary before applying for a mark – to see what possible marks could block an application and if it is necessary to make adjustments to the trademark or its representative goods/services before filing the application.

Trademark Application

Big companies, often, receive office actions.

Take the case of Shake Shack, which is now a publicly-traded company.  Shake Shack is known for – obviously – milkshakes as well as its hamburgers.  In expanding its offerings, the company has decided to expand its trademark portfolio as the Shake Shack trademark represents more goods/services than it did previously.  This is a common issue for many companies whose goods or services expand to feature products or have features not originally planned for.

In this matter, the USPTO issued an office action against Shake Shack, citing a Detroit-area chain called Chicken Shack (owned by Sobeck Enterprises, Inc.).

A part of the matter is that Shake Shack’s new food offerings include chicken, so the company is seeking protection in that industry.

“(T)he evidence of record shows that the goods and services at issue are related because the (Sobeck company) sell chicken and/or chicken sandwiches at their respective restaurants,” the Aug. 14 action from trademark examining attorney John Gartner states.  “Since the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of (Shake Shack)’s goods. Therefore, (the proposed) mark is not entitled to registration.”

Of course, the response to an office action is not due for six months, and if the USPTO examining attorney does not accept the arguments in favor of registration, the applicant is entitled to appeal to the Trademark Trial and Appeal Board, a federal administrative court, to either seek a judgment of concurrent use (if the marks are already in use), or to cancel any cited marks.

Big companies and small companies alike receive office actions in the USPTO.  The question is if you have planned for that rejection and how to overcome it.