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By J.D. Houvener
Patent Attorney and Founder

The individual applied for a trademark registration, and they got what’s called an office action back from the trademark examining attorney. The office action says that there’s a likelihood of confusion with a previously registered trademark. It looks like the client potentially looked up that registration and thinks it’s either dead, meaning it hasn’t been renewed, or it’s been canceled by a third party. Potentially, it’s still alive, but that company’s no longer in business or selling that product or service.

If that’s the case, then, one, if it’s abandoned and no longer active in the USPTO database, and it says “dead” on the registration, you can respond back to the office action, letting the examining attorney know that the trademark that was cited against you is now dead, and that your application should precede the publication; it’s the next step in the registration process.

If the mark is still registered and live at the USPTO but is no longer in use, depending on how long it’s been abandoned, you might be able to cancel the trademark registration and then get around the office action. So, that’s something that we do quite frequently.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at