Whether you want to register a copyright, trademark, or patent, doing so is essential to protect your original works, business, and brand from infringement in the future. However, the process of formally obtaining these legal rights can be lengthy and complicated, while refusals are common.
If you are a business owner, inventor, author, or other creator and have recently had your IP application rejected, do not lose heart. Whether responding to an office action or handling an appeal, an attorney can advise as to the most appropriate course of action. Here’s what to do after your copyright, trademark, or patent application is rejected and what you need to know about the common reasons for refusals.
Copyright, trademark, or patent registration is a vital step in securing the long-term success of your creative work, idea, brand, or invention, while maximizing their value. Patents are exclusive rights granted for inventions, while trademarks refer to a symbol, word, phrase, or other distinguishing mark that identifies a product and distinguishes it from other sources.
A copyright gives the owner the exclusive right to copy, adapt, perform or distribute a creative work for a period of time. Securing registration or approval from the required government body means that if someone infringes on your intellectual property rights, you can take swift legal action which can include financial recovery of damages.
The U.S. Patent and Trademark Office (USPTO) handles applications for patents and trademarks, while the U.S. Copyright Office (part of the Library of Congress) oversee copyright registrations. When a creator or business owner files to register a copyright or trademark, or patent, a rejection on the first try is not uncommon, but knowing what to do next can be complicated.
An attorney knows how to handle rejections based on a variety of grounds, and can heighten the chances of success moving forward. For example, copyright denials often trace back to an issue with the underlying application or ineligibility because the creative work does not meet the minimum requirements for registration.
The USPTO commonly rejects trademark applications for issues such as no definite identification of goods or services to help ensure there are no conflicts with existing marks, or because part of the trademark is not registerable. Patent rejections usually hinge around factors like lack of novelty or ineligible subject matter.
You should act swiftly after an IP application rejection to ensure that you meet the required deadlines and maximize your chances of achieving a positive outcome. For example, when a copyright application is rejected, one option is to request consideration from the U.S. Copyright Office within three months of the date of refusal. If the decision is unfavorable, the applicant can appeal and launch an action in federal court.
The first type of trademark rejection involves a nonfinal office action, which informs applicants of issues that they can fix. Failure to respond within the appropriate time can lead to the issuance of a final office action.
When a trademark application receives a final office action from the USPTO, they can file an appeal with the Trademark Trial and Appeal Board (TTAB). Applicants have six months to submit an appeal after receiving a final office action. After a second rejection, the applicants must file a request reconsideration within just one month.
Dealing with patent refusals can also involve several stages. These can include nonfinal and final office actions, as well as appeals submitted before the Patent Trial and Appeal Board (PTAB) in some cases.
Copyrights, trademarks, and patents are extremely valuable intellectual property rights. In the absence of proper registration, you can be left without the right to claim ownership or profits derived from your creative expression, invention, or idea.
If you’re unsure what to do after your copyright, trademark, or patent application is rejected, you likely have recourse. Lomnitzer Law can provide invaluable counsel to navigate the legal challenge while actively working to advocate for approval. Contact our office today to speak with an attorney about your situation in a one-on-one legal consultation.
