Trademark Office Action
What is a Trademark Office Action
A trademark office action is an official letter sent by the United States Patent and Trademark Office (“USPTO“) where a trademark examining attorney lists any legal problems that your chosen trademark may have or with the application itself.
Your office action can be either a nonfinal or final office action depending on whether the office action raises the legal problem about your application for the first time or for the last time. With your nonfinal office action you must respond within six months from the date it issues. If your response satisfies each legal problem the examiner raises and doesn’t raise any new problems then your application will proceed toward registration. If your response doesn’t satisfy the examiner’s concerns then you will receive a final office action or if your response raises new concerns then you will received nonfinal office action.
If you received a final trademark office action, this is your last opportunity to file a response during the application process. If your response satisfies the examiner’s concerns then it will proceed to registration, if not, then the application will be abandoned unless you file a timely appeal with the Trademark Trial and Appeal Board.
Deadline for Filing Response to Trademark Office Action
Generally the trademark examiner will give you 6 months to respond to your office action.
How to File a Response to Trademark Office Action
Your response must address every concern the examining attorney raises. Make sure you understand each legal problem that is addresses. For example, it could be a disclaimer, likelihood of confusion, or descriptiveness rejection. Each one of these rejections requires some type of response with a potential argument of why your mark doesn’t cause confusion or why it is not descriptive using case law. A disclaimer is a common refusal where you disclaim the descriptive term within your mark.
If you have any questions at all on how to respond to an office action please feel free to reach out to the attorneys at Accelerate IP. They have experience responding to office actions and getting results.