What should you do if you receive a trademark Office Action?

Trademark Law0 comments

It’s a scenario that urges many business owners to hit the panic button:

You submit your application to the United States Patent and Trademark Office (USPTO) and wait an eternity for some sort of response.

But the one you get isn’t the one you were hoping for.

It’s an Office Action (OA).

Cue the sinking stomach.Womp womp.

I know this can be really scary, but it doesn’t mean all hope is lost, and you should hit panic or fold and give up your whole business endeavor now.

An Office Action in response to your trademark application doesn’t have to spell THE END.

It could just be that you need to put in a bit more work before you can enjoy the happily ever after of a successful trademark registration.

**But before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

What is an Office Action?

An Office Action is written correspondence from the USPTO that may ask a question, request clarification, or may even flat-out refuse registration of your mark. 

Yes, that last scenario sucks (there’s no other way to say it), but it’s obviously not the only reason you might receive an OA in response to your trademark application.

In fact, ~60% of applications receive an OA for one reason or another.

If you receive an OA, you’re required to submit a written response in order for your application to continue being considered for registration.

 And your response must address each issue raised by the Examining Attorney. 

It’s also important to note that there are two types of OAs:

  1. Non-Final Office Action

A Non-Final OA is the first correspondence from the USPTO that raises any issue. 

  1. Final Office Action

As the name suggests, the USPTO will issue a Final OA as a final warning about issues they’ve identified in your application. 

A Final OA will only be issued if a Non-Final OA was issued first and the USPTO determined that you failed to address or overcome the issues raised in the Non-Final OA. 

This represents your last chance to argue for registration without having to bring an appeal before the Trademark Trial and Appeal Board (T-T-A-B).

Both Non-Final and Final OAs require written responses, and your approach is determined by whether the issues raised by the USPTO are substantive or not. 

Non-Substantive Office Actions

If you’ve received an OA, the first step is to determine whether the issues raised are non-substantive.

Because if you receive a non-substantive Office Action, you can actually breathe a sigh of relief. 

Non-substantive office actions mean the Examining Attorney isn’t flat-out refusing registration, they’ve just identified a few issues in your application that need to be cleaned up. 

These are administrative matters, like:

– Requesting a disclaimer for a specific term or phrase

– Requiring changes to the description of the goods or services

– Asking for an alternate specimen to be submitted

In other words, a non-substantive OA doesn’t typically require legal research or argument. 

Which means they can be relatively “easy” to address and get your application back on track to registration. 

If you receive a substantive Office Action on the other hand, more work is required. 

Substantive Office Actions

If you’ve received a substantive Office Action after submitting your trademark registration application to the USPTO, the Examiner has identified more complex issues in your application. 

The most common reasons an Examining Attorney may issue a substantive OA include:

– They determine a likelihood of confusion exists

– They believe your mark is too descriptive

– They believe your mark is failing to function as a trademark

Note: This is not an exhaustive list of all the reasons an Examining Attorney may find a substantive issue in your trademark application.

Substantive OAs typically require legal research and argument to properly address. 

And this is the moment I tell you to stop DIYing things.

It’s time to chat with an attorney ASAP at this point. 

So do not pass go, do not collect $200, do not file that OA in your email folder, and ignore it. 

Get advice from a trademark registration attorney right away.

Responding to an Office Action

Substantive or non-substantive, your written response to either a Non-Final or Final Office Action must be received no later than 3 months from the date the OA is issued in order to be considered timely. 

The moment you receive an Office Action:

Note the response deadline on your calendar. In your project management tool of choice. Both electronic and paper. 

And go ahead and set a reminder on your phone while you’re at it.

It might sound like overkill, but you won’t think so if you miss the deadline. Because if you do, the USPTO will consider your application abandoned. 

If that happens, you won’t receive a refund of your filing fees (and attorney’s fees if you’re working with an attorney).

And your application will never reach registration. 

If you’re within the 3-month timeframe to respond, you can file a Request for Extension of Time to receive an additional 3 months (for a total of 6 months to respond). 

(But note that at the time of publishing this blog post, this will set you back $125, plus any requisite attorney’s fees.)

Whatever you do, DO NOT WAIT UNTIL THE END OF THE TIMEFRAME TO FILE YOUR RESPONSE. 

Let’s be real – life can be unpredictable, and it’s all too easy for unforeseen circumstances to affect your ability to respond.

Add that to the frequency with which the USPTO’s Trademark Electronic Application System (TEAS) is down due to maintenance, and you want to leave yourself plenty of time.

If the unthinkable happens and the USPTO declares your application abandoned, you can file a Petition to Revive Abandoned Application, so long as:

– It’s filed no later than two months after the issue date of the Notice of Abandonment

– You submit the Response to Office Action

– You pay the fee for extension 

If you’re looking for a bottom line, this is it:

Working with an attorney for your trademark registration, including Office Action responses, can alleviate a lot of the stress and pressure that comes with taking on a project that has significant legal consequences for you and your business.

 

Want to keep Uncomplicating Trademarks for yourself?

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I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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