What is a Trademark Office Action? How Do I Respond to a Trademark Office Action?

trademark office action

During the trademark registration process, the United States Patent and Trademark Office (USPTO) may send you what is called an “office action.”  Basically, a trademark office action is a letter from the trademark examining attorney informing you about the status of your trademark application.  In general, you must properly prepare and file the trademark office action response within six months of it being issued.  If you don’t file the response by the deadline, your trademark application will go abandoned and you’ll be forced to start the application process all over again unless you’re eligible to file a Petition to Revive (which will result in having to pay more fees).

Some Trademark Office Action Issues are Minor

Most of the time, a trademark office action raises relatively minor procedural or technical issues that need to be resolved before the trademark examining attorney will approve your application.  For instance, it may require you to slightly amend the identification of products and services listed in your application, insert a disclaimer, or submit a better quality drawing of your trademark.  These kinds of issues can often be handled with a telephone call or informal email to the trademark examining attorney in charge of reviewing your application.

Other Issues are Complex

On the other hand, a trademark office action may raise complex legal issues that need to be addressed before your application will be approved by the trademark examining attorney.  For example, it may indicate that the trademark examining attorney is refusing registration of your trademark on the basis that it’s likely to cause confusion with another mark in an existing trademark registration or pending trademark application.  Similarly, the office action may indicate that your application is being rejected on the basis that your trademark is merely descriptive, primarily geographically descriptive, deceptive, primarily merely a surname, or that it falsely suggests a connection with a person or institution.  In these cases, it will be necessary to research, prepare, and submit a detailed legal argument in order to attempt to persuade the trademark examining attorney to withdraw the refusal.  If you’re successful, then the trademark examining attorney will approve your application.  In the event you’re unsuccessful, the trademark examining attorney will most likely issue a final office action and you’ll have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB) and/or filing a Request for Reconsideration.

Filing a Trademark Office Action Response

A response must be filed online using the Trademark Electronic Application System (TEAS).  It’s crucial that you use the correct form and that you fully address each issue raised by the trademark examining attorney.  If your response fails to do so, the trademark examining attorney may declare your application abandoned.  As such, it’s often best to hire an experienced and knowledgeable trademark attorney to assist you in preparing and filing the response so that you know for sure that it satisfies all outstanding requirements.  In fact, if you’re a “foreign-domiciled” individual or entity, you must hire a U.S.-licensed attorney to file the response on your behalf.

May I Help With Your Trademark Office Action Response?

I’m experienced US trademark attorney Morris Turek.  If you’ve received a trademark office action, I would be glad to carefully review it free-of-charge.  I’ll then advise you of all your options and their associated benefits, risks, and costs.  If you choose to move forward with the response after our consultation, I will promptly prepare and submit one that fully addresses all of the issues raised in the office action.

If you’d like an absolutely free consultation about your office action from an skilled and trusted attorney, please feel free to give me a call at (314) 749-4059, fill out my contact form (found below), or shoot me an email at morris@yourtrademarkattorney.com.  I look forward to hearing from you soon.

Related Article: What is a Post-Registration Office Action?