How to Respond to a Trademark Office Action

Trademark protection is where the rubber of the often abstract intellectual property law hits the road of commercial reality, so to speak.


Ensuring proper and enforceable protection for your business’s brand is an important first step towards establishing brand recognition and goodwill. It is also a key step towards the effective protection and, as a consequence, monetization of your brand. The United States Patent and Trademark Office (USPTO) has invested substantially in making the trademark registration process easy and accessible.


Despite this, the rigorous enforcement of trademark protection requires that the USPTO scrutinize every application that comes before it. Even the most scrupulous trademark applications can result in a USPTO Office action. Luckily, we know everything there is to know about how to respond to an Office action, and we’d gladly share that knowledge here.


What Are Trademark Office Actions?


Upon successful submission of a trademark application, the USPTO will typically review the application within approximately three months. Each application is reviewed by an examining attorney. If, for any reason, the examining attorney determines that the trademark cannot be registered, an Office action will be issued. Essentially, an Office action is simply a notification that there are some issues with a trademark application. In most cases, the issues raised can be resolved through amendments, clarifications or corrections to the application.


Types of Office Actions


Generally, we distinguish between two types of Office action based on each action’s timing in the application process. If an issue is being raised for the first time, the USPTO issues a non-final Office action. This action serves to notify the application of any possible impediments to trademark registration, and allows the applicant to file a response.


If the applicant does not succeed in rectifying the issues raised in a previous non-final Office action, the USPTO issues a final Office action. In such cases, the applicant does not have a right to file a response again. However, It is possible to file a request for reconsideration to the Trademark Trial and Appeal Board. More on that below.


Contents of an Office Action


An Office action will provide a complete and exhaustive list of the examining attorney’s reasoning for his/her refusal to register the trademark. The Office action will often include the legal reasoning and rules behind each of the examining attorney’s objections. These objections might be substantive or non-substantive.


Substantive objections usually relate to the likelihood that the trademark could be confused with a previously registered trademark (or a prior-pending application). Another common substantive issue with a trademark application might be that the trademark is merely descriptive.


Non-substantive Office actions usually raise issues that are easier to address. For example, the examining attorney might require that a disclaimer be added to the brand name, that there are amendments to the description of goods and services, clearer images of the logo/brand name, or even simply that additional filing fees be paid.


Filing an Office Action Response


Usually, an applicant will have six months from the issue date of the Office action to respond. However, the response deadline may be different for a specific Office action – be sure to confirm the specific deadline on the Office action document. Keeping to the deadline is extremely important – once the deadline has passed, the trademark application is automatically considered abandoned. That effectively ends the application process and, as a result, the trademark will not be registered.


The USPTO prefers to communicate electronically. Unless an applicant did not authorize electronic communication, the Office action will be sent via email. Be sure to check spam and promotions folders, therefore (the e-mail will be from a address). The Office action will also be available online on the USPTO trademark status and document retrieval (TSDR) database – you will need your serial number.

As a general rule of thumb, it is a good idea to check the database every few months to see if there are any new developments with your applications. You can also check in on the status of your application by calling 1800-786-9199.


Your Office action response must be filed online on the trademark electronic application system (TEAS). The response to Office action form is available there. The response form can be completed in two steps: (1) checking all appropriate boxes that apply to your particular response, and (2) filling out the response.


What to Include in an Office Action Response


It is extremely important to ensure that your response addresses each and every point raised by the examining attorney. Any omission in this regard will result in a final Office action.


In your response, argue your own interpretation of the evidence. You can also submit your own evidence to support your interpretation or analysis of your trademark. Offer information about your industry if such information is pertinent to the trademark registration decision. Avoid sweeping arguments that cannot be completely substantiated by supporting evidence – be sure to assert only what you can prove.


Sometimes, the Office action document suggests that you contact the examining attorney. Do this, via e-mail or telephone, as soon as possible. It may result in an easier response process and help you better understand the issues raised in Office action. Regardless of whether you are invited to contact the examining attorney, you are always welcome to do so.


The examining attorney will not be able to provide any legal advice, however. It is also important to note that, if you appoint a lawyer, the USPTO and the examining attorney will only be able to speak to your lawyer and not to you.


How to respond to a final Office action


An applicant may file a request for reconsideration with the Trademark Trial and Appeal Board (TTAB) in response to a final Office action. Such a request may include new issues and new evidence. If a request for reconsideration does not result in approval of the trademark registration, applications have 6 months to file a Notice of Appeal at the TTAB.


Consult a Trademark Attorney


Leave the trademark registration process to LawTrades legal experts. Contact one of our trademark lawyers today and spend your time on building your brand while we ensure its protection.

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