Often, filing an application with the United States Patent and Trademark Office (USPTO) can be the first step in a longer process; if the trademark application has any problems, the USPTO will issue an “Office Action”. An Office Action lets an applicant know that the trademark application has a flaw that bars its registration. Properly responding to trademark Office Actions can make the difference between getting the mark you want and being forced to change all of your marketing and branding against your will.

Responding to trademark office actions is an important part of the trademark registration process.

Responding to trademark office actions is an important part of the trademark registration process.

What Are Trademark Office Actions?

In short, an examining attorney at the USPTO issues an Office Action when there is a problem with the trademark application. Most commonly, the USPTO finds the trademark to be descriptive, and will not allow it to be registered. The second most common reason is that it conflicts with an existing trademark. Beyond that, there are a number of reasons why you might find yourself responding to trademark Office Actions rather than celebrating your newly registered trademark.

Responding to Trademark Office Actions

The time for responding to trademark Office Actions is six months from the time that the Office Action is issued. If you fail to respond to the Office Action within that time, the trademark application will be cancelled and you will have to start from step one (and pay all the fees again).

Generally, your attorney should be the one responding to trademark Office Actions as the responses will need to analyze the cases cited by the examining attorney and present new cases to support your position. Or, if your position is completely untenable, your lawyer will be able to advise you on alternate means of resolving the problem. The response to the Office Action will come in the form of a response brief, which will address all of the issues raised by the examining attorney (and it is important that all of the issues be addressed).

What Happens After Responding to Trademark Office Actions?

After you have responded to a trademark Office Action, the USPTO examining attorney will either accept the arguments that your attorney presented, or reject them in the form of a final rejection. If your arguments are accepted, the trademark application proceeds as planned.

If you get a final rejection, you can either file a request for reconsideration or file an appeal to the Trademark Trial and Appeals Board (TTAB). Doing either or both of these things will allow your argument to be heard again, and is especially important if your trademark raises novel issues of law.

What To Do If You Need to Respond To A Trademark Office Action

Receiving a trademark Office Action is not the end of the road, but properly responding to trademark Office Actions in a timely manner is crucial to getting the trademark that you want. As I said above, you will want to have a lawyer assist with this – at the very least you will want to consult with an attorney to determine if a response is merited or if there are other ways of resolving the issue (and there are, depending upon the nature of the problems). If you have received an Office Action from the United States Patent and Trademark Office, you are welcome to get in touch with me to set up an appointment to discuss things further and to make a game plan.

Remember, getting a trademark registration is a crucial part of a complete brand protection strategy. Don’t let an Office Action stop you from building the brand that you want.


 

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