The Legal Brief
What to Do If You Receive an Office Action for a Trademark Filing with the USPTO
September 12, 2024
Receiving an Office Action from the United States Patent and Trademark Office (USPTO) can feel like a setback, but it’s a common part of the trademark registration process. An Office Action is an official letter from the USPTO examiner outlining issues with your application that need to be addressed before your trademark can proceed to registration. Here’s what you need to know—and do—if you receive one.
1. Understand the Type of Office Action
There are two primary types of Office Actions: non-final and final.
1. A non-final Office Action raises concerns or objections about your application that can still be corrected or addressed. These issues could be related to insufficient information, conflicting trademarks, or substantive legal issues like descriptiveness or likelihood of confusion.
2. A final Office Action means that the USPTO examiner was not satisfied with your responses to a prior non-final Office Action. While it may sound like the end of the road, you still have options to overcome the objections or appeal the decision.
2. Review the Reasons for the Office Action
Carefully read through the Office Action to identify the issues the examiner raised. Common reasons include:
- Likelihood of Confusion: The examiner believes your trademark is too similar to an existing registered mark.
- Descriptiveness: Your mark may be considered too descriptive of the goods or services offered, making it ineligible for trademark protection.
- Specimen Issues: The USPTO may reject your specimen, the proof showing how your trademark is used in commerce.
- Disclaimer Requirement: Sometimes, you’ll be asked to disclaim exclusive rights to certain words or phrases that are generic or descriptive.
Understanding the reasons behind the Office Action is key to formulating an effective response.
3. Hire an Attorney
While it’s possible to respond to an Office Action on your own, trademark law can be complex. Working with an experienced trademark attorney can significantly improve your chances of a successful registration. An attorney can help analyze the examiner’s objections, draft a comprehensive and persuasive response, suggest amendments to the application that might resolve the issues, and provide advice on whether to appeal a final decision or pursue other legal avenues.
4. Prepare a Response
If the Office Action is non-final, you must submit a response within three months of the issuance date. When preparing your response:
- Address each issue raised by the examiner with specific arguments or amendments.
- If the issue is a likelihood of confusion, you may argue that your trademark is sufficiently different from the cited mark or that the goods and services are unrelated.
- If it’s a descriptiveness issue, you could argue that your trademark has acquired distinctiveness or is suggestive rather than descriptive.
- For specimen rejections, consider submitting a new specimen that better demonstrates the trademark in use.
5. Know Your Deadlines
Timeliness is critical in the trademark process. You generally have three months from the date of the Office Action to respond. Failing to meet this deadline will result in your application being abandoned. It's crucial to stay on top of the timeline.
6. Evaluate Your Options for a Final Office Action
If you receive a final Office Action, you have a few options:
- Request reconsideration: If you believe there’s been a misunderstanding or you can provide new evidence, you can request that the examiner reconsider their decision.
- File an appeal: You can appeal to the Trademark Trial and Appeal Board (TTAB) if you think the final Office Action was incorrect based on the facts or law.
- Amend your application: Sometimes, amending your goods/services description or making other changes can help move your application forward.
7. Stay Proactive
Trademark registration is a process that requires attention to detail and deadlines. If you receive an Office Action, don’t panic. Instead, take it as an opportunity to refine your application and strengthen your case for registration.
At Jackson Kelly, we specialize in intellectual property law, including trademark filings and Office Action responses. Contact us today if you need help navigating the complexities of the trademark process.
Joshua A. Claybourn is a member serving as the firm’s intellectual property and licensing practice group leader. He also represents municipalities and units of government.