Trademark Office Action

Filing the Notice of Appeal with the Trademark Trial and Appeal Board (TTAB) is the very first step in the trademark appeal process.  You may only file the Notice of Appeal after an examining attorney at the United States Patent and Trademark Office (USPTO) issues a final office action indicating that the refusal to register your trademark has been made final.  The purpose of filing the Notice of Appeal is to preserve your right to attempt to convince the TTAB (through the submission of competent evidence and persuasive arguments) that the examining attorney’s final refusal to register your mark is improper and should be overturned.  In other words, it informs the TTAB of your intent to challenge the examining attorney’s reasons for rejecting your trademark application.

Read more

A provisional refusal of protection is issued by the United States Patent and Trademark Office (USPTO) when a trademark for which an extension of protection is sought doesn’t meet the eligibility requirements for registration on the Principal Register.  A provisional refusal is also sometimes referred to as a “nonfinal office action” and is essentially identical to a trademark office action that would be issued by the USPTO in response to a trademark application not filed in accordance with the Madrid Protocol.  In other words, “provisional refusal” is just a fancy name given to an office action when a mark is the subject of an extension of protection under Section 66(a) rather than the subject of a trademark application filed directly with the USPTO under Section 1(a), Section 1(b), Section 44(d), or Section 44(e).

Read more

It’s extremely common to receive a trademark office action from the United States Patent and Trademark Office (USPTO) after filing a trademark application.  You may also receive an office action after filing the Statement of Use or an Amendment to Allege Use.  If you don’t file a response that addresses the issues raised in the office action within three months of the office action being issued, then your trademark application will go abandoned.

But what if you can’t file a response by the three-month deadline?  What if you need more time to conduct research and to draft an argument to attempt to overcome a major rejection (such as a likelihood of confusion refusal)?  Maybe you require some additional time to discuss the office action with the examining attorney in charge of your application?  Perhaps you need time to seek the assistance of a skilled and knowledgeable trademark attorney?  Whatever the reason, you can file a Request for an Extension of Time to File a Response to the office action.

Read more

A final office action is issued by the United States Patent and Trademark Office (USPTO) if you didn’t successfully or properly respond to all of the issues raised in a previous trademark office action.  If your trademark application was filed directly with the USPTO, then you must take action within three months from the date the final office action is sent (or six months if you timely filed a Request for an Extension of Time to File a Response).  On the other hand, if you’re seeking an extension of protection of your trademark in the United States through WIPO and the Madrid Protocol, then you must take action within six months from the mailing date of the final office action.  In both cases, if you fail to do so, your trademark application will go abandoned and you’ll have little choice but to begin the trademark application process all over again (unless you’re eligible to file a Petition to Revive).

If you receive a final office action, you basically have three options:

Read more