What To Do If You Get a Trademark Office Action

You’ve filed the necessary trademark application(s) with the U.S. Patent and Trademark Office (USPTO) for your business’ brand name and logos to protect and grow your business. Several months go by and you receive a challenge to your application from the USPTO in the form of an Office Action.

What is an Office Action

Office Actions are often sent out around two to four months after an application is filed by the Trademark office examining attorneys who are assigned to review, approve or reject applications. These formal responses initially reject your trademark application for assorted issues they find with it. The Office Action will explain why your trademark registration was not granted and what you, the applicant, are required to do to receive the trademark.

Non-Final Office Action vs. Final Office Action

A non-final office action and a final action are the two kinds of office actions that the USPTO will issue. At the beginning of the examination process, a non-final office action may be issued when the examining attorney raises issues with the trademark application for the first time. Some common concerns may include:

  • That the desired trademark could have “Likelihood of Confusion” and be confused with another registered trademark or pending trademark application.
  • That a proposed trademark is too generic.
  • That the proposed trademark is only descriptive of an element, component or function of a product or service.
  • That the trademark applicant did not supply appropriate or acceptable proof of use of the trademark.
  • That the mark is based mainly on a geographic region.
  • Some other technical issue with the application itself.

You have six months from the date the office action was sent to respond to all of the issues that the examining attorney has raised. If you do not reply within that time frame, the trademark application becomes abandoned and is considered “dead.” Receiving an office action may slow down the trademark application progress, but it allows you a chance to review and revise the trademark to make sure the application is fully protecting it.

A final office action comes at the end of the review process when the examining attorney fully denies the application. If your application is rejected at this stage, you can appeal the decision to the Trademark Trial and Appeal Board. This becomes an extremely long and complicated process that can take many hours and is very costly, so it benefits you to avoid getting to this stage as an attorney will be necessary.

Responding to an Office Action

Office Actions are a common hurdle for trademark applications and are filled with confusing legal terms and arguments that can make it all the more complicated if you’re not an attorney. Once a trademark application is filed, you’ve started a legal process that is governed by specific federal laws.

Five steps for responding to an Office Action

  1. Don't Panic.

    Read through the entire office action carefully and more than once. The trademark office recommends numbering each of the issues raised1 to outline all of the matters that your attorney needs to respond to.

  2. Hire an experienced trademark attorney.

    If you didn’t involve an experienced trademark attorney from the beginning, this is the time to hire one so you can get past the issues raised and get your trademark registered. The USPTO itself recommends that you hire a trademark attorney.2 Trademark attorneys who work regularly with the trademark office have the expertise and background to find and fix potential problems before an application is filed and respond quickly to technical and legal concerns once an Office Action is issued.

  3. Start working on your response as soon as possible.

    Even though you have six months, the longer you wait to respond the longer the trademark registration will take. It may take your attorney a while to answer the Office Action if the concerns are complicated, so the sooner you get started, the better. If your reply is not sent in by the deadline, the trademark office may consider your application abandoned.

  4. Ask for clarifications.

    Your attorney can contact the examining attorney and get answers to your questions and explain what they are looking for. The examining attorney can only explain their reasonings behind an Office Action, they can’t help you craft your reply. The examining attorney challenging your application is not working for you, so the reply is up to you and your attorney.

  5. Answer every concern.

    Some issues raised in the Office Action may be quickly resolved. Others could take several hours and could require you to make legal arguments that, for example, validate why your trademark isn’t too generic or easily confused with another. Be sure to respond to each concern carefully as you will face the rejection of your entire application if even one of the issues is not responded to.

Intellectual Property Network, Inc. is skilled and knowledgeable in Trademark and Intellectual Property processes and can help increase the chances of approval while you spend your valuable time developing your business. Intellectual Property Network, Inc. can help companies and individuals protect their inventions and obtain trademarks, so, please schedule a strategy session today to find out how we can help your business.


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