What is a trademark Office Action?

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

In general, there are 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.

An experienced trademark attorney can help you anticipate the possibility of a merely descriptive rejection. Words that describe a characteristic of your product or service will carry a higher risk of this rejection. To reduce this risk, an experienced IP attorney can compare the mark to the covered goods or services, and provide some helpful feedback.

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 to Respond to Trademark Office Action

Unlike patent Office Actions, a trademark Office Action deadline is non-extendable. That non-extendable deadline for response is six months from the issue date of the Office Action. Accordingly, no extensions of time are available to respond to a trademark Office Action. So make sure you calendar this deadline if you haven’t yet engaged a trademark lawyer.

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 will be qualified to file a trademark Office Action response with the USPTO. In contrast, patent agents and non-lawyer agents are not qualified to file a response.

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 non-final. The applicant will have an opportunity to respond to the Office Action. To be complete, all issues raised in the action must be adequately addressed.

The timing of your Office Action response may involve some strategy worth discussing with your trademark counsel. For example, suppose a registration with a renewal coming due in less than 6 months is cited against your application. In this case, it may be worthwhile to defer the response. After a few months, check the status of the cited registration to see if a renewal has been filed. If not, you might be able to save the cost and hassle of preparing arguments. So delaying the response might help you avoid expensive legal arguments.

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 when marks are rejected on the basis of a likelihood of confusion or mere descriptiveness. Instead of repeating the same arguments, you will want to argue new or different points to respond to a final trademark Office Action more effectively.

Request for Reconsideration

In response to a Final Office Action, you have a few options. First, you may file a Request for Reconsideration if you have new issues and new evidence [TMEP 715.03]. Second, you may appeal to the Trademark Trial and Appeal Board (TTAB).

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.

It may be appropriate in certain situations 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

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com