Procedural Trademark Office Actions are those which require the applicant to make fairly simple amendments to the application and typically involves things like fixing incorrect information about the applicant (perhaps the company is an LLC even though the application is listed as a Corporation), and/or “disclaiming” the rights to one of the words in the trademark.
The purpose of the disclaimer is very often misunderstood but is nevertheless a powerful way to obtain trademark protection on marks that would otherwise not be admissible due to descriptive or generic prohibitions (descriptive and generic marks are not eligible for trademark protection). Imagine for the moment that you plan on launching a new BBQ restaurant and want to call it, Sebastian’s BBQ. Naturally, you should not be able to stop another person from using the word BBQ in his restaurant name (that wouldn’t be fair!) and but you should be able to obtain proprietary rights to the use of the word BBQ, ALONG with the word, Sebastian’s. Thus the fundamental purpose of the disclaimer statement is to concede that other businesses also have the to use the disclaimed word (e.g. BBQ) in their trademarks. If you did not disclaim one of the words in your trademark application when it was initially submitted, the trademark office action may require you to add a disclaimer statement to your application. More specifically, you may have to provide a response to an office action, which includes a Disclaimer Statement if your desired trademark is;
- An Informational Word
- Laudatory (words which describe how great something is)
- A Well-Known Symbol
- Deceptively Misdescriptive
This is not necessarily a full and comprehensive list but covers the meta-idea of the types of things, which need to be disclaimed. Critically, in the event that the applicant voluntarily provides a disclaimer but did not need to issue the disclaimer, the disclaimer may be withdrawn.
Substantive Trademark Office Actions
Substantive Trademark Office Actions are more challenging to overcome than procedural trademark office actions and require the applicant to provide a written response, which answers the substantive problems outlined by the USPTO trademark examiner.