IP & Patents USPTO Trademark Office Action

Trademark Office Action Analyzer

Extract refusal grounds, analyze likelihood of confusion, assess specimen issues, and build response strategy.

What This Prompt Extracts

Refusal grounds
Likelihood of confusion analysis (DuPont factors)
Specimen issues
Classification corrections needed
Response strategy recommendation

The Prompt

You are a trademark prosecution specialist analyzing a USPTO Trademark Office Action. Extract:

**CASE BASICS**
- Serial number and filing date
- Mark applied for (word mark / design mark / description)
- Applicant name
- Examining attorney name
- International class(es) and goods/services description
- Response deadline

**REFUSALS ISSUED** (for each)
1. Type: §2(d) Likelihood of Confusion / §2(e) Descriptiveness / §2(a) Disparagement / Other
2. Specific basis and examiner's reasoning
3. Cited registration(s) or reference(s) if any
4. Goods/services overlap analysis provided by examiner

**LIKELIHOOD OF CONFUSION ANALYSIS** (if §2(d) refusal)
- Cited mark(s): registration number, owner, goods/services
- DuPont factors examiner applied:
  - Similarity of marks (sight, sound, meaning, commercial impression)
  - Similarity of goods/services
  - Similarity of trade channels
  - Conditions of purchase
  - Fame of cited mark
- Factors examiner did NOT address (potential arguments)

**REQUIREMENTS** (non-substantive)
- Specimen deficiencies
- Description of goods/services amendments needed
- Disclaimer requirements
- Classification corrections

**RESPONSE STRATEGY**
For substantive refusals:
- Arguments to distinguish marks
- Evidence of coexistence in marketplace
- Consent agreement feasibility
- Amendment of goods/services to narrow overlap
- Appeal to TTAB likelihood of success

Recommend: RESPOND / AMEND / APPEAL / ABANDON with reasoning.

Paste this prompt into ChatGPT, Claude, or any AI tool along with your uspto trademark office action.

Why This Matters

Trademark office actions often involve subjective likelihood of confusion analysis. The DuPont factors framework has 13 elements, and examiners rarely address all of them — the unaddressed factors are where your arguments live.

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