What is a trademark Office Action?

A trademark Office Action is a letter issued by the USPTO examining attorney reviewing your trademark application (i.e., the trademark examiner). Here are some practical tips on how to respond to a trademark Office Action.

There are generally two types of issues raised in trademark Office Actions:

  1. registration refusal; and
  2. requests for clarification, modification and/or disclaimer.

What are substantive vs. non-substantive trademark Office Actions?

Office Actions that refuse registration are sometimes referred to as substantive Office Actions. Common grounds for rejecting a trademark application include:

  1. likelihood of confusion over a previously registered mark or prior-filed application; and
  2. mere descriptiveness.

The risk of a likelihood of confusion rejection may be reduced by conducting a knockout search prior to filing a trademark application. This gives the applicant an opportunity to gauge the risk of a rejection and, if necessary, pivot to a different mark.

The possibility of a merely descriptive rejection can be gauged by an experienced trademark attorney who can compare the mark to the covered goods or services, and provide some helpful feedback on the level of descriptiveness in the mark.

A non-substantive Office Action typically requests more information from the client. For example, the examining attorney may seek:

  • a disclaimer of a generic term
  • amendments to the identification of goods and services
  • more information about the products or services identified in the application
  • revisions to the description of the mark
  • additional USPTO filing fees due to the identification of goods/services covering more classes than what was originally paid
  • a clearer image file (JPG) of a logo
  • better or additional specimens of use

Deadline for Response

Unlike patent Office Actions, a trademark Office Action sets forth a non-extendable deadline for response that is six months from the date of the action is issued.

Madrid Office Action Response

For Madrid applications under section 66(a), the deadline for response is 6 months from the date the USPTO sent the Office Action to the International Bureau (WIPO), and not the date of notification by WIPO to the holder. A licensed US attorney, and not a patent agent, will be qualified to file a trademark Office Action response with the USPTO.

Office Actions for Madrid Protocol applications typically contain suggested modifications to the identification of goods/services. If the Office Action for a Madrid application does not contain any substantive refusals, then it is fairly straightforward to file a response adopting the examining attorney’s suggested identification. Make sure the blanks as indicated by any [bracketed sections] are sufficiently filled in when supplying a revised identification of goods/services.

How to respond to a non-final Office Action

The first Office Action issued in a trademark application is considered a non-final action. The applicant will have an opportunity to respond to the Office Action. All issues raised in the action should be adequately addressed.

The timing of your Office Action response may involve some strategy worth discussing with your trademark counsel. For example, if your application is rejected on a likelihood of confusion over a registration with a renewal coming due in less than 6 months, it may be worthwhile to check the status of the cited registration to see if a renewal has been filed. If not, it may be prudent to delay the response to avoid a costly legal effort in preparing substantive arguments regarding the absence of likelihood of confusion.

How to respond to a Final Office Action

If the examining attorney is not convinced by the arguments in your response to the non-final Office Action, a Final Office Action will be issued. Final Office Actions are fairly common in applications rejected on the basis of a likelihood of confusion over confusingly similar marks.

Request for Reconsideration

In response to a Final Office Action, the applicant may file a Request for Reconsideration or an appeal to the Trademark Trial and Appeal Board (TTAB). The Request for Reconsideration may include new issues and new evidence [TMEP 715.03].

Notice of Appeal

If the USPTO trademark examining attorney does not issue a favorable decision in response to the request for reconsideration within 6 months of the date of the Final Office Action, the applicant must file a Notice of Appeal with the TTAB by the 6-month date from the Final Office Action. If a decision on the request for reconsideration has not yet been rendered, the applicant may request suspension of the appeal upon filing the Notice of Appeal. Otherwise, the appeal brief is due 60 days from the filing date of the Notice of Appeal.

In certain situations, it may be appropriate to request suspension of the application if the determination of a particular issue hinges on the outcome of a third party registration or application.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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