The United States Patent and Trademark Office (USPTO) will issue a post-registration office action if you file a trademark registration renewal or maintenance document that doesn’t satisfy all of the legal requirements. Here’s a list of documents that could trigger an office action if filed incorrectly:
- Section 8 Declaration of Use
- Section 71 Declaration of Use
- Declaration of Excusable Nonuse under Section 8 or Section 71
- Section 15 Declaration of Incontestability
- Section 8 and 9 Renewal
- Section 7 Request to Amend Trademark Registration
What is in a Post-Registration Office Action?
A post-registration office action explains in detail the reason(s) why the USPTO cannot accept or acknowledge your trademark registration renewal or maintenance document (e.g. a trademark specimen refusal). It also provides you with some general guidelines on how to respond to the office action and the deadline for doing so. In addition, the contact information for the individual who reviewed your post-registration document appears toward the end of the office action. You may want to call or email that person should you have any questions/concerns after reviewing the office action. However, please note that all USPTO representatives are prohibited from giving legal advice and can only provide very general information and guidance.
How Much Time Do I Have to Respond?
Generally speaking, you have six months from the date on which the USPTO issued the post-registration office action to file a response. You must respond to each individual issue raised in the office action or else the USPTO may consider your response incomplete. You should use the online form provided by the USPTO and pay any fees that may be required as part of your response. If you successfully respond to each point raised in the office action, then the USPTO will withdraw its rejection and will accept your trademark registration renewal or maintenance document.
What Happens If I Don’t Respond to a Post-Registration Office Action?
The consequences of not responding to a post-registration office action by the deadline depends on the precise renewal or maintenance document that you filed. For instance, let’s say that the USPTO refuses to accept your Section 8 or Section 71 Declaration of Use because you failed to provide a proper specimen showing use of your trademark in commerce. In that case, the consequence of not filing a response to the post-registration office action would be cancellation of your trademark registration. Similarly, your trademark registration would be canceled if you failed to respond to a post-registration office action after filing the Section 8 & 9 trademark renewal. A canceled trademark registration is invalid and of no legal significance whatsoever.
On the other hand, let’s pretend that the USPTO denies your Section 7 Request for Amendment of your registration because the change you want to make to your trademark is an impermissible “material alteration” of your mark. The only consequence of not responding to the post-registration office action would be that your trademark isn’t amended. Your trademark registration would still remain active and it would be as if you never even filed the Section 7 Request. The same is true if you failed to respond to an office action after filing the Section 15 Declaration of Incontestability. Your registration wouldn’t be canceled, but you also wouldn’t receive the benefits and protections of incontestability.
Need Help with a Post-Registration Office Action?
I’m experienced US trademark attorney Morris Turek. If you would like some assistance responding to a post-registration office action, l would be happy to review it free-of-charge and speak with you about your options and their associated costs. I can be reached via email at firstname.lastname@example.org, by phone at (314) 749-4059, or by sending me a message through my contact form located at the bottom of this page. I look forward to hearing from you soon.