What are Trademark Office Actions?

What are Trademark Office Actions?

by Jane Haskins, Esq., September 2015

You submitted your trademark application and you’ve been waiting to hear that your trademark is officially registered. 

But instead, you get a letter from the U.S. Patent and Trademark Office, or USPTO. It’s called an “Office action.” It seems like your registration might be denied, but the letter is full of legalese and hard to understand. You wonder if your trademark application has been a big waste of time and money.

The fact is, it’s common for trademark applications to hit bumps in the road. About three months after you submit a trademark application, an examining attorney at the USPTO will review it. If the attorney identifies any problems, you’ll receive a letter known as an “Office action.”

Types of Office Actions

There are two kinds of trademark Office actions:

  • If an issue is being raised for the first time, the U.S. Trademark Office will issue a non-final Office action. The Office action explains the problems with the application and gives the applicant an opportunity to address or correct them.
  • If the applicant has failed to overcome the issues raised in a previous Office action, the USPTO will issue a final Office action. You have more limited rights to respond to final Office actions.

Reasons for Office Actions

There are many reasons you might receive an Office action during the trademark process. Some of the most common are:

  • The USPTO believes there is a likelihood of confusion between your mark and another trademark that is already registered. A “likelihood of confusion” occurs when two marks look or sound similar to one another and are used in connection with the same class of goods or services. The USPTO won’t allow trademark registration for a new mark if it is confusingly similar to an existing one.
  • You are trying to register something that cannot be trademarked, such as a descriptive or geographic name.
  • There are technical errors in your trademark filing. For example, you may not have submitted a proper specimen of your mark.

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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