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

trademark office action

During the US trademark application process, the United States Patent and Trademark Office (USPTO) may send you a trademark office action.  A trademark office action is a communication from an examining attorney indicating why your trademark application cannot be approved.  A non-final office action is typically issued after the examining attorney (1) reviews your trademark application, (2) reviews the Statement of Use, and/or (3) reviews an Amendment to Allege Use.  In general, if your trademark application was filed directly with the USPTO, then you must respond to the trademark office action within three months of it being 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 respond to the trademark office action within six months of it being sent.

If you don’t file a response by the deadline, your trademark application will go abandoned and you’ll be forced to begin the trademark registration process all over again (unless you’re eligible to file a Petition to Revive).

Most 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 examining attorney will approve your trademark application.  For example, the examining attorney may require that you do one or more of the following:

  • Amend the identification of products and/or services listed in your application
  • Amend the classification of products and/or services listed in your application
  • Revise the description of your trademark
  • Enter a disclaimer
  • Amend the color claim and color description
  • Claim ownership of a prior registration
  • Provide a translation or transliteration of any foreign wording that’s part of your trademark
  • Indicate whether your mark has any meaning or significance in relation to your products and/or services

Generally speaking, a trademark office action sent in response to the filing of the Statement of Use or an Amendment to Allege Use doesn’t raise these types of issues.  Instead, you’re most likely to receive a trademark specimen refusal (which I will discuss later).

Some Issues are Complex

Although the issues in a trademark office action are often fairly minor, the examining attorney can also raise very complex and substantial legal issues that you’ll need to successfully overcome before your trademark application will be approved.  For instance, the examining attorney may refuse registration of your mark for one or more of the following reasons:

In these cases, it will very likely be necessary to research, prepare, and file a detailed legal argument in order to attempt to persuade the examining attorney to withdraw the rejection.  You may have some alternative options at your disposal under some circumstances, but these options are frequently not easy, cheap, or readily apparent to someone who isn’t familiar with the intricacies of federal trademark registration.

Other Issues Depend On the Circumstances

Some issues raised in a trademark office action can either be minor or complex depending on your specific circumstances.  For example, one common issue raised in an office action is with regard to the specimens submitted with a trademark application filed under Section 1(a) (use in commerce), the Statement of Use, or an Amendment to Allege Use.  This trademark specimen refusal can oftentimes be quite simple to address.  But, sometimes, this rejection can be extremely difficult or impossible to overcome.

The same is true for a rejection that might happen if your trademark consists of or contains the name, likeness, or signature of a particular living individual.  If you actually have the consent of the living individual to use and register the name, likeness, or signature with the USPTO, then the refusal is very easy to address.  If not, then it may be practically impossible to overcome.

How Do I Respond to a Trademark Office Action?

In order to avoid abandonment of your application, you must respond to the trademark office action by the deadline.  The minor issues I talked about earlier can sometimes be handled with a telephone call or informal email to the examining attorney.  If so, the examining attorney will makes the necessary changes to your application and will send out an examiner’s amendment confirming that the changes have been made.  The examiner’s amendment essentially functions as the office action response.

For all issues that cannot be resolved with an email or phone call, a response to the office action 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 and every issue raised by the examining attorney.  If you’re successful in overcoming all of the issues, then the examining attorney will approve your trademark application (or Statement of Use or Amendment to Allege Use).  In the event you’re unsuccessful, the examining attorney will most likely issue a final office action.  At that point, you’ll have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB), filing a Request for Reconsideration with the USPTO, or simply allowing your application to go abandoned.

Regardless of whether the issues are minor or complex, it’s often best to work with an experienced and knowledgeable trademark attorney to assist you in preparing and filing the office action 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.

I Can 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 a response 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 a 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?