Trademark Office Action

Have you received a Trademark Office Action?

When filing a patent, trademark, or copyright file for USPTO it goes through a series of examinations that can take several months. USPTO has an examining attorney that lists any legal problems found within your application file and chosen mark that you are trying to protect. An office action is when the examining attorney needs the applicant to fix some legal issues by making tweaks to the design, clarifying your goods and service. There are also some cases where the examining attorney disses out a legal rejection due to a trademark that could be confusing with an already existing trademark. Always read the office action letter that the USPTO responds with when you receive one, the USPTO files everything under non-final or final. 

  • Non-Final: used as the first warning to your application as it raises legal problems. Respond within six months and solve each legal problem to proceed towards registration. If one doesn’t solve the legal issues with a response then they will be sent a final office action. If your response raises more problems, you receive another non-final.
  • Final- this is a response that is only given once. This needs to be responded to and satisfy all legal problems or the application will be abandoned. Only once will you be able to fix all legal issues so that your application can be registered. 

Now that you know the types of office actions, how does someone respond to them and where can someone respond to one? 

  • Email/ phone: You can respond through email or phone by calling or sending an email to the examining attorney. 
  • Responding through USPTO: To respond through USPTO you must use the Trademark Electronic Application System (TEAS). Must use the correct form to respond. To respond to a non-final go here Non-Final response. To respond to a final action go here TEAS Request for Reconsideration after Final Action form. Note (USPTO forms must be signed by a proper person to be accepted) 

For the USPTO to Accept any response the applicant must understand and fix all legal problems, but for those who have questions ask an attorney or your examining attorney. If the examining attorney is unavailable then the examining attorney’s supervisor can fill in but the supervisor might not be too familiar with your case. To receive help navigating the USPTO website and online system go to the Trademark Assistance Center (TAC). Below are common refusals and requirements to make your trademark, patent, or copyright application process go faster. 

The USPTO hands out non-finals or finals to applications that don’t meet the requirements. Below are ways your application can avoid mistakes and make your application process go by faster. 

A definite identification of goods and services

  • People must understand what business you are giving the goods and services to so that the USPTO can easily identify if your trademark conflicts with another trademark in that industry.
  • To properly classify the goods and services.
  • Create a trademark that can not be confused with another or it will be denied. 
  • The fee for every application is based on the amount of classes you are describing in the mark. 
  • Goods and services can’t be changed after submitting your application; it can only be specified in more detail about the selected goods and services.
  •  You won’t be able to undo any changes that you made to the mark whether it be adding specifications or removing goods and services. 
  • If you wanted to broaden your mark you would have to make a new application.

A disclaimer to your trademark: 

  • A disclaimer is made when an examining attorney determines that a specific term or design in the trademark is not registerable. 
  • A disclaimer is so that one person does not have full rights to a design or specific term. (like Cafe Rio cant trademark for the word cafe in Sassy’s cafe and bakery)

A good specimen: 

  • A specimen must be provided when an application is being filled as 1(a).
  • Shows trademarks being used in commerce as listed in the goods and services.
  • Must be in actual use, not a mock up or ad for the goods or services.
  • Specimens must be understood that the trademark is being used as a trademark. (See example of a specimen for goods and services)

Common issue with specimens: 

  • Trademark is not visibly shown in the specimen.
  • Trademark appears to differ from the specimen and the drawing.
  • The specimen and the goods and services have no association to each other.
  • The specimen is not shown being used as a product that people can purchase.
  • The specimen doesn’t have a trademark that can easily be traced back to the business that owns the mark.

If whenever your specimen is refused you can make an argument to the examining attorney by giving facts and logic to why the specimen is in use. Another way to solve the issue is by giving another specimen that meets the legal requirements. 

There are occasions when a trademark is run through the USPTO database and the examining attorney finds it is similar to one or more other trademarks. These refusals are known as section 2(d) “Likelihood of confusion”. It is based on the fact that consumers could believe that one good and services are made by another registered trademark owner instead of the other. 

Tips to respond to a 2(d) refusal:

  • Proclaim the examining attorney’s evidence or analysis on why your trademark is not similar to other trademarks by providing facts on why your trademark is not similar in appearance, meaning, sound, or overall commercial impression.
  • Proclaim the examining attorney’s evidence or analysis on why your trade mark is not similar in the fact that your goods or services are different, unrelated, or are registered in different trade names from those in other lister registrations.
  • Specifying your trademark by restricting your goods or services to a specific class and field, but you should consult your examining attorney on this option since broadening your trademark is alway the better option, in doing so you’ll be unable to change it back to the original trademark.
  • Consent from the registered trademark holder is another option that you should ask another attorney, since the response time won’t be expanded to wait for whether or not you can get consent to use the trademark. (this is not very recommended)

USPTO does not like the use of common phrases being used in trademarks. Using a  phrase in your trademark is not a good idea unless you are trademarking a slogan. The USPTO doesn’t want trademarks to have goods or services to be described in trademarks. Like salty for french fries or squishy for pillows. The USPTO would file this under section 2(e)(1) “descriptiveness” ; they file this to have companies use any language to describe their goods or services without the fear of infringing on a trademark. 

Tips to respond to a Section 2(e)(1) “descriptiveness”: 

  • Explain to the examining attorney that your trademark does not have wording that describes your goods or services in any way and provide images that would support your claim.
  • Making your trademark have descriptive words but making the words generic, like having the mark that says Automobiles for a car dealership.
  • Specifying your goods or services to one field to amend the refusal, however you should discuss this with your examining attorney.

Tips to avoid common phrasing:

  • Show that the trademark is not used in common phrases by providing evidence of the phrase not being used commonly on products or services.
  • Provide evidence on how you use your mark as it pertains to not being used as a common phrase and how it would be linked back to your mark .

The USPTO has many strict laws and regulations that one’s trademark must go through to  really be registered as your own. It is always best to consult with a professional USPTO consultant or a law firm that specializes in patents and trademarks. If you are in need of such experts then contact Accelerate IP, they are professional trademark attorneys located in Phoenix, Mesa, and Tucson that can easily help with patents and trademark applications. The USPTO has a tedious process and these attorneys make it easy for you.

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