USPTO Trademark Application Office Actions

What is an Office Action and how do trademark applicants respond to Office Actions?



What is an Office Action?


Once a trademark application is submitted to the United States Patent and Trademark Office (USPTO), it is assigned to a Trademark Examining Attorney after about three months. The role of the Examining Attorney is to review the application to make sure it complies with the statutory requirements before approving the application for registration. Statutory requirements required by the USPTO for a trademark application to proceed to registration include submission of an acceptable specimen, a correct goods or services identifications, basic information about the owner of the trademark such as name and address, no likelihood of confusion with previously registered marks and many other requirements. If the application fails to meet the statutory requirements, the Examining Attorney will issue an Office Action, which allows the applicant the ability to respond to the Examining Attorney’s concerns and/or correct the application’s defect.


Office Actions are mailed, emailed and put into the Trademark Status and Document Retrieval System (TSDR). Here is an example of an Office Action as seen on the TSDR.


How to Respond to Office Actions


If a trademark owner receives an Office Action from the Examining Attorney regarding their trademark application, the trademark owner, on their own or through an attorney, has six months to respond to all the issue(s) raised in the Office Action. It is important not to miss a deadline to File a Response to an Office Action because a failure to respond will result in the application going “abandoned” at the USPTO and the application will not proceed to registration.


Sometimes the solution to an Office Action is simple, such as a good was included in the application that belongs in a different class of goods. For a simple issue, such as a misidentification of a good, a phone call with the Examining Attorney may be all that is needed to sort out the issue. However, sometimes the issue is more complicated, such as an Office Action based on the Examining Attorney’s opinion that there is already a confusingly similar trademark registered at the USPTO. In that instance, the trademark applicant’s best course of action is to respond by written communication explaining why there is no likelihood of confusion between the applied for trademark and the previously existing trademark. Trademark applicants can respond online at the Response to Office Action portal.


The online portal to respond to an Office Action can be found here


When the Examining Attorney does his or her first review of the trademark application and issues an Office Action, it is commonly referred to as the Initial Office Action. If the applicant explains away the issue or fixes the application to meet the issues laid out in the Office Action to the Examining Attorney’s satisfaction, then the Examining Attorney will approve the application for publication in the Official Gazette. However, if the Response to the Office Action does not satisfy the Examining Attorney’s concerns about the application, the Examining Attorney may issue a Final Office Action. A Final Office Action gives the trademark applicant one final chance to convince the Examining Attorney the application should be approved for registration, or to appeal directly to the Trademark Trial and Appeal Board to plead the case that the Examining Attorney is wrong and the application should be approved for publication.


The best way to avoid any Office Actions is to make sure the application meets all the statutory requirements before filing. Common issues include submitting an unacceptable specimen or running into a previously registered trademark that the Examining Attorney worries may create a likelihood of confusion in the marketplace. By doing a bit more work before filing a trademark application, the delays and added costs (if an attorney files the applications and is billing by the hour) can hopefully be avoided.


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