This Trademark Office Action Response Cheatsheet helps you get back on track. The United States Patent & Trademark Office (the USPTO) issues trademark Office Actions when they find a problem with a trademark application. If you received a trademark Office Action, read below to learn what to do.
What Is A Trademark Office Action?
The USPTO issues an Office Action when they find a problem with a trademark application. An Office Action gives legal reasons why the USPTO has chosen to refuse trademark registration. However, trademark applicants have an opportunity to respond and challenge the refusal.
When Does The USPTO Issue Trademark Office Actions?
The USPTO issues Office Actions during the examination. During the examination part of the trademark registration process, the USPTO examiner seeks out defects in a trademark application. If the examiner finds irregularities, the examiner issues an Office Action stating the defects.
What Are The Reasons For Getting A Trademark Office Action?
The USPTO issues Office Actions when a trademark application does not comply with the law.
Sometimes a minor deviation causes an Office Action; other Office Actions arise because of significant issues with a trademark application.
Common reasons for getting a trademark Office Action:
- Likelihood of confusion: When the USPTO determines that two trademarks would cause confusion with one another, they issue a “likelihood of confusion” refusal. Applicants may respond by making appropriate legal arguments contending that the two trademarks are not so similar as to be confusing.
- Descriptiveness: If a trademark describes the goods or services that it represents, it is descriptive. The USPTO will refuse to register a descriptive trademark on the Principal Trademark Register but may register the mark on the Supplemental Trademark Register.
- Merely ornamental: If you use the trademark as a decoration and not as a brand, the USPTO deems such use as “merely ornamental.” The USPTO refuses to register merely ornamental trademarks.
- Specimen Refusal: If a trademark specimen does not show proper trademark usage, the application gets refused. To solve this problem, submit a trademark specimen that shows adequate usage of the trademark.
- Surname Refusal: The USPTO might take issue if the proposed trademark is mainly a last name. This is called a “surname refusal.”
- Disclaimer: If a trademark contains a common word, such as “incorporated” or “studios,” the USPTO will want the applicant to disclaim that word. Disclaiming the word means that the applicant does not assert rights to that particular word. However, this decision must be considered carefully.
- Class Refusal: If you file your trademark application in the wrong trademark class (or your application requires additional trademark classes), you will need to fi that.
There are many more reasons that the USPTO issues trademark Office Actions, but this list shows the most common causes.
In any case, a trademark Office Action requires a proper legal response. Successful applicants typically hire a trademark attorney to do that type of specialized work.
If you get a trademark Office Action, you have your work cut out for you.
How Likely Is It That My Trademark Application Gets A Trademark Office Action?
Most trademark applications receive an Office Action. Applications prepared by a trademark attorney receive fewer Office Actions. Since trademark attorneys know how to avoid common trademark mistakes, they can help you avoid getting Office Actions.
The likelihood that your particular application receives an Office Action depends mainly upon the application’s specific details. Working with a trademark attorney prior to filing your application helps you avoid needless Office Actions
How Do I Respond To A Trademark Office Action?
To respond to an Office Action, you file a form on the USPTO website. This form allows you to choose how you wish to reply. Follow this link for more information from the USPTO on how to respond.
While this form may seem simple, do not be deceived. Since you have a limited number of chances to contest the Office Action you either need to be 100% sure that you are responding correctly (and completely) or you need to secure the services of a trademark lawyer who can complete the process.
What Happens If I Fail To Respond To A Trademark Office Action?
Generally, you have six months to reply to a trademark Office Action. If you fail to respond, you risk abandoning your application. If you abandon your application, you will have to start the trademark registration process over again.
Note that for some Office Actions, you might need to fix an underlying issue with your trademark application. Since that can take time, do not wait until the last minute. Start the response early to improve your chances of success.
How Much Does It Cost To Respond To A Trademark Office Action?
Depending on the complexity, costs vary. As with other trademark costs, a lot depends upon how you approach the issue. For more straightforward Office Actions, the cost to hire an attorney may only be a few hundred dollars. For more difficult Office Actions, it could be thousands. The best business owners seek out quotes from several attorneys to get a good value.
How Do I Appeal If The Examiner Does Not Accept My Office Action Response?
If you respond to an Office Action and the examiner does not accept your response, you will have one chance to appeal with him or her. You can also appeal to the Trademark Trial and Appeal Board for a more formal and in-depth proceeding.
Why Are So Many Lawyers and Other Services Contacting Me After I Got My Trademark Office Action?
Several less-scrupulous firms and services trawl USPTO data and contact anyone who received a trademark Office Action.
We recommend avoiding these companies and seeking out counsel on your own.
