If you have applied to register your trademark with the United States Patent and Trademark Office (“USPTO”), you may receive something called an “Office Action.” While it can feel discouraging to get one, an Office Action is not a rejection. It is a request for clarification or correction that gives you the opportunity to respond and keep your application moving forward.
Understanding what an Office Action means and how to respond properly can make the difference between securing your trademark or having your application go abandoned.
What Is an Office Action?
An Office Action is a written notice issued by a USPTO examining attorney during the trademark application review process. It outlines any legal problems or deficiencies in your application that need to be addressed before it can proceed to registration.
There are two main types:
- Non-final Office Actions typically raise issues for the first time, such as clarity in the description of goods, disclaimers, or conflicts with existing marks.
- Final Office Actions are issued if the USPTO still finds the issues unresolved after your initial response.
The most common reasons for an Office Action include:
- Likelihood of confusion with an existing mark
- Descriptiveness or generic wording
- Improper classification of goods or services
- Missing disclaimers
- Incomplete or unclear application information
Do I Have to Respond?
Yes. You must respond to the Office Action within three months of the issue date (as of late 2022, the USPTO reduced the response window from six months). You can request a single three-month extension if needed, but if you miss the deadline entirely, your application will be considered abandoned.
How Should I Respond?
The appropriate response depends on the reason for the Office Action. Some issues are relatively straightforward, such as:
- Agreeing to a disclaimer
- Revising the identification of goods or services
- Clarifying the mark’s translation or meaning
Others, like a refusal based on likelihood of confusion or descriptiveness, may require a more detailed legal argument supported by case law, evidence, or proof of acquired distinctiveness.
This is where working with a trademark attorney is especially helpful. An experienced attorney can:
- Interpret the basis of the refusal
- Advise you on your likelihood of overcoming the refusal
- Draft and submit a persuasive response that addresses the USPTO’s concerns
- Help you amend your application if necessary
What Happens Next?
Once your response is submitted, the examining attorney will review it. If the response resolves all issues, the application will proceed toward publication and, eventually, registration. If the response does not satisfy the USPTO, you may receive a Final Office Action or be required to appeal the decision to the Trademark Trial and Appeal Board (“TTAB”).
Do Not Ignore It
An Office Action is not the end of the road, but it is time-sensitive. Ignoring it or submitting an incomplete response can result in losing your application and your filing fees. Taking swift and strategic action is the best way to protect your trademark rights.
Contact assistant@rinckerlaw.com or call (217) 531-2179 for more information.