A trademark Office Action is a letter issued by the USPTO examining attorney assigned to review your trademark application. All issues raised in a trademark Office Action must be adequately addressed to avoid abandonment of the trademark application.

Has my trademark application been rejected?

Receiving an Office Action does not necessarily mean that your trademark application has been rejected. You need to review the details of the letter to determine if you are dealing with a substantive or non-substantive Office Action.

Responses to non-substantive Office Actions are generally straightforward and simpler to prepare. As part of my firm’s trademark filing package, we provide non-substantive Office Action responses at no additional charge.

When is a response due?

A response must be filed by six months from the date of the trademark Office Action. Unlike patent deadlines, this trademark deadline is not extendable.

Will an Office Action response require additional USPTO government fees?

Possibly. If the examining attorney suggests a modified identification of goods/services that spans multiple classes, you may have to pay additional USPTO filing fees for each additional class that was not covered in your initial filing payment. Of course, you can also choose to delete certain goods or services to avoid additional classes, thereby avoiding additional government fees.

Can Office Actions be avoided or minimized?

Common substantive rejections of trademark applications include likelihood of confusion over a prior filing, and mere descriptiveness. A trademark knockout search by a competent trademark attorney can reduce the risks of a likelihood of confusion rejection. An experienced trademark attorney can also provide guidance as to whether a mark may be deemed merely descriptive of the contemplated goods or services.

For a quicker path to registration especially in a use-based application, an applicant should seek to avoid Office Actions by providing a comprehensive initial filing with goods and services that are properly identified and categorized in the right classes, and acceptable specimens of use. Doing so can shave months off the pendency of a trademark application and lead to a Notice of Allowance in less time.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.