What is a Trademark Office Action?

What is a Trademark Office Action?

by Ronna L. DeLoe, Esq., July 2015

You filed an application for a trademark with the United States Patent and Trademark Office (USPTO) but instead of getting approved, you receive a document from their office rejecting the trademark. Sometimes the document may be an outright rejection and other times it may be asking for more information about your application. Still, it’s not letting you register your trademark. What can you do about it?

What is an Office Action?

A trademark Office action is a response to your application for a trademark to the USPTO. This document is written by a trademark examiner from the USPTO, who is an attorney assigned with the task of deciding whether the trademark application should be accepted. The examiner looks for similarities to existing trademarks and also looks to ensure that generic marks are not used as trademarks.

Generic use of marks is where the proposed trademark describes the use of the goods and services sought to be registered. An example of an attempted generic use is the word Xerox, which identifies a photocopier by the Xerox Corporation. The word Xerox began to mean the act of photocopying, but the Xerox Corporation has a trademark for the word Xerox, which means its copiers. The Xerox Corporation has spent millions of dollars on public awareness ads to ensure that the word Xerox is a recognized trademark and that it does not become synonymous with the act of photocopying.

Generally, the document you receive from the USPTO in a trademark Office action is a rejection of the application for your trademark registration. The document explains why the mark is being rejected, such as:

  • Similarity to an existing mark
  • Likelihood of confusion with an existing mark
  • The proposed trademark appears generic
  • The proposed trademark is descriptive of the item or goods and services
  • The proposed trademark is vulgar or immoral
  • An insufficient sample of the trademark was submitted which does not show how the mark is to be used, or
  • Insufficient information was provided on the application.

Deadline for Responding to an Office Action

If you have received a USPTO Office action document, you must respond to it. Your response must be received within 6 months of the mailing date of the Office action document. To register a trademark with the USPTO, you must respond or your application will be deemed abandoned. No extensions of time are permitted.

How Do You Respond to a Trademark Office Action?

Your Office action response is important in determining whether you can register the trademark with the U.S. Trademark Office. You can do the response yourself by mail or online at the USPTO site, or you can hire an experienced trademark attorney. An attorney will know the legal arguments you should raise. Whether you hire an attorney is up to you and will likely depend on the cost of the attorney, the ability or inability to do the response yourself, and how important it is to get the trademark.

Sometimes an examiner will contact you by telephone if the problem with the application is a simple one that can be corrected or clarified by a quick phone conversation. Most responses, however, will have to be done in writing. You have the right to respond, but you must do so or the application will be deemed abandoned.

When responding to a trademark Office action, consider why the action was issued and answer the questions directly. If there is insufficient information on the application, make sure the application is complete. This may require supplying the correct name of someone on the application or further describing the goods properly. You may want to have an attorney assist you with this.

If, however, the issue is confusion with another trademark or using a descriptive or generic-sounding name, your job of persuading the examiner will be more difficult. If the rejection is because of a likelihood of confusion, you will need to use a legal argument to show why your proposed trademark is different. You may submit evidence as to why your trademark will not create confusion. Legal and factual arguments are based on trademark law. You may want to hire a trademark attorney.

Every issue the examiner raised must be addressed. You need to convince the examiner that there is no likelihood of confusion or your descriptive or generic-sounding name has the law on its side. You may present evidence of how similar trademarks are being used to show they are completely different from your proposed trademark. You also can present evidence that the goods and services of the prior trademark are completely unrelated to your mark or that the two trademarks are dissimilar in appearance. You can show how the other trademark is perceived by the public. An experienced attorney will know how to present this argument.

You can always abandon your application if you believe it will be difficult to prove why it should be granted. You can abandon your application by filing a Request for Express Abandonment (Withdrawal) of Application. Be aware that if you fail to answer in a timely manner or file an abandonment request, you are allowing others to use your mark. 
If you fail to convince the examiner that the mark should be allowed, you will receive a final Office action rejecting the application. You have the right to appeal this action to the Trademark Trial and Appeal Board.

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