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4 Things You Need to Know About Trademark Office Actions

Anyone who files trademark applications with the United States Patent and Trademark Office (USPTO) should be familiar with the term “Office Action”. An Office Action is simply the title of an official letter sent by the USPTO – although nowadays, most Office Actions are sent via email rather than in a paper letter.

When a trademark application is filed with the USPTO, the first thing that happens is that it’s assigned to an Examining Attorney employed by the USPTO. The Examining Attorney will review the application and if they find any issues, they will send out an Office Action to the correspondent who’s listed in the application – typically, either the applicant or her attorney.

USPTO Office Actions can cover a lot of different topics. Here are the 4 most important things you need to know about trademark Office Actions.

1. Every Office Action has a Deadline.

In most cases, the trademark applicant (or her attorney) must respond to the Office Action within six months from the date the Office Action issued. So if the date on the Office Action is January 1, 2019, and a response is not received by the USPTO by July 1, 2019, the response was not timely – meaning the trademark application will be abandoned.

Always carefully review your Office Action to make sure you know the exact response deadline.

2. Office Actions can be Simple or Complex.

OK, these aren’t technical terms that the USPTO uses. It’s just how I like to communicate with my clients so they understand what we’re dealing with.

An example of what I’d consider a “simple” Office Action is a clarification of the goods or services. Let’s say you’ve applied to register your trademark in class 9 for “podcasts”. The USPTO Examining Attorney will send out an Office Action requesting details on the topic of the podcasts. That’s pretty straightforward, and it’s probably not going to take you or your lawyer a lot of time to respond.

A “complex” Office Action might involve multiple issues, or it may only focus on one subject. But it is one that requires a substantial amount of time for the applicant (or, more likely, an experienced trademark attorney) to research and draft a response to. This may have to do with a gray area in the law, or it may turn on the Examining Attorney’s interpretation of a nuance of USPTO policy. As you might imagine, preparing a successful response to a complex Office Action is going to be more time-consuming and costly.

3. Office Actions often involve Requirements and/or Refusals – what’s the difference?

When you review your Office Action, you will notice that the Examining Attorney has probably used the term “Requirement” or “Refusal”, or possibly both terms if there are multiple issues to be addressed.

A Requirement is a request by the Examining Attorney that you provide more information. For example, you may need to tell the Examining Attorney whether a word in your trademark has a meaning in a foreign language, or you may need to add more detail to your list of goods and services (see the podcast example above).

A Refusal is just what it sounds like. The Examining Attorney has determined that the USPTO should refuse to register this trademark pursuant to some aspect of trademark law or USPTO policy. That doesn’t necessarily mean it’s the end of the road. In many cases, Refusals detailed in Office Actions can be overcome – but we would definitely consider that a complex matter, and one that’s usually best handled by someone with a substantial background in trademark law and dealing with the USPTO.

4. Office Actions can be Nonfinal vs. Final – what does that mean?

Fortunately, this one is pretty straightforward. The USPTO usually gives trademark applicants two opportunities to deal with issues raised in an Office Action. Initial Office Actions are labeled “Nonfinal”, meaning there is an opportunity for at least one additional round of back-and-forth with the Examining Attorney. When you receive a Final Office Action, that means this is your last shot at addressing the issue(s). If the response to a Final Office Action is not accepted, then the trademark application will be abandoned, unless the issue has been appealed to the USPTO’s Trademark Trial and Appeal Board (a step that should almost always be left up to the pros).

To summarize: when faced with a trademark Office Action, first you want to make sure you are aware of the response deadline. Then you want to evaluate how complex or simple the issues are and whether they involve Requirements or Refusals. And as you go through the process, you need to keep track of whether the Office Action is Nonfinal or Final.

Whether you’ve received an Office Action or you simply want to make sure your trademark application gets filed correctly the first time, you can always contact me for help with trademark registration.

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