What Are Trademark Office Actions?

Preparing your trademark office action response

Your office action letter will say how long you have to respond. Usually, the response must be received within six months of the mailing date of the letter, but sometimes the time frame is shorter. The response deadline cannot be extended, so it’s important to make a note of it. If you don’t respond to an office action by the deadline, the USPTO will consider your application abandoned. That means your trademark will not be registered, and you won’t get your application fee back.

Sometimes, office actions identify simple problems that are easy to address—such as submitting a different specimen. But sometimes the issues are more complex and require a more detailed office action response. For example, if the examining attorney identifies a likelihood of confusion between your mark and another registered mark, you will have to submit legal arguments to show the differences between the two marks. You may have a greater chance of overcoming the objection if you hire a trademark attorney to help you.

When responding to an office action, it’s important to address each of the examiner’s objections. If you respond to one objection but neglect the others, you’re likely to receive a final office action on the remaining issues. If you don’t understand what the letter is asking for, you can contact the examining attorney for clarification. However, the examining attorney is not your lawyer and cannot help you prepare a response.

If you receive a final office action, the only way to respond is to comply with its requirements or file an appeal with the Trademark Trial and Appeal Board.

The U.S. trademark office recommends filing responses electronically through the USPTO’s Trademark Electronic Application System, or TEAS. 

It can be disappointing to receive a trademark office action, but an office action doesn’t necessarily mean your trademark can’t be registered. Be sure you respond thoroughly to each of the points raised in the office action letter and don’t miss the deadline. If you can afford it, consider hiring a trademark lawyer to help.

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