Responding to a Trademark Office Action

Responding to a Trademark Office Action

by Jane Haskins, Esq., January 2015

Once you have submitted your trademark registration application to the U.S. Patent and Trademark Office (USPTO), it will be sent to an examining attorney for review. If more information is required or there are problems with your application, the examining attorney will send an official letter, known as an Office action, to notify you that there is an issue. Your application will not move any further until you respond to the Office action.

There are two types of Office actions:

  • A non-final Office action informs you of an issue for the first time.
  • A final Office action is sent if your response to a prior Office action did not resolve the issue that was identified. The only way to respond to a final Office action is either to comply with the requirements contained in the letter or to submit an appeal to the Trademark Trial and Appeal Board.

There are several reasons that you might receive an Office action. They include:

  • Your application may have technical errors, such as grammatical issues that cause the description to be unclear.
  • You may have included an inadequate sample showing how the trademark will be used.
  • The examining attorney may believe that your mark will likely cause confusion with an existing registered mark or with a mark for which an application was filed earlier than yours.
  • You may be attempting to trademark something that cannot be trademarked, such as a generic or descriptive name for an item.

Filing a Response

Your response to an Office action must address the problem to the satisfaction of the examining attorney; otherwise, you risk having your trademark application refused. Because of this, and because the problems with your application may potentially be difficult to resolve, you may want to seek the advice of a trademark attorney before responding to an Office action.

In most cases, the USPTO must receive your response within six months of the mailing date on the Office action, unless the letter specifies a different deadline. The deadline is important: It cannot be extended and, if you miss the deadline, your trademark application will be considered abandoned.

The USPTO prefers to receive responses to Office actions electronically through their Trademark Electronic Application System (TEAS), though you can also submit a response via fax or mail. The USPTO website has details on how to submit a response.

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