What is an Office Action?
After your trademark application is filed with the United States Patent and Trademark Office (USPTO), an examining attorney will review it. The review is done to determine if your application is complete and to review the mark itself to see if it meets the requirements for registration. In the event that either your application is incomplete or the examiner feels your mark doesn’t meet the registration requirements, you will receive an Office Action. This is not a good thing because it means something is wrong with either your mark or your application. It also means that additional time will be added to your registration process.
There are two (2) types of Office Actions, Non-Final and Final. Non-Final Office Actions list all of the issues identified either in the application or with the mark itself. You, or your attorney, have 6 months from the date the Office Action is registered with the USPTO’s system to respond to each item listed. If you choose not to respond, your application will be abandoned after the 6 months have expired. Once your application has expired, you cannot revive it. This means you will have to file a new application if you want to try to register the same mark.
Final Office Actions are issued once an examining attorney has had a chance to review your response to a Non-Final Office Action. In this case, the examining attorney has determined that some part of your response is inadequate or that your argument for registration is not valid. You are unable to respond to a Final Office Action and your mark will be abandoned.
How do you Respond?
The Office Action will provide instructions on how to provide a response. If you receive the Office Action electronically, it will include a link for your to click on which will take you to the page where you can provide your response. A response to an Office Action can be as simple as uploading a new specimen (picture of your mark being used in commerce) or can require a thorough legal argument. You can save your response so that you don’t have to finish it all at the same time. However, you must respond to each item before you hit submit. If you don’t, the examining attorney will assume you are not providing a response. This can result in a Final Office Action being issued and refusal of your mark’s registration.
Common Office Action Triggers:
The following are some common examples of problems with an application or mark that will result in an Office Action.
- Drawing Unacceptable
- Specimen Unacceptable
- Revised Description of Mark Required
- Revised Class of Goods Required
- US Attorney of Record Required for Foreign Domiciles
- Disclaimer Required: some language must be disclaimed due to its generic nature
- Mark is Merely Descriptive: mark doesn’t meet distinctiveness requirement for registration
- Likelihood of Confusion: mark is too similar to a currently registered mark or prior filed pending application
- Mark is Not Protectable: certain types of things cannot be protected (i.e. public symbols, famous individuals names, surnames other than your own, etc.)