If you scroll through Tailor Brands’ blog page, you’ll find posts covering every step of the trademark application process.
If you’ve received an office action letter from the U.S. Patent and Trademark Office (USPTO) and are slightly panicking (so much legal jargon!), you’re in the right place. Rest assured, it’s common for trademark applications to receive an office action letter.
We’ll cover what an office action is, the various reasons why you might’ve received it, and how to respond. By the end of this post, you’ll have all the information you need to navigate this bump in the road on the way to obtaining your trademark.
A trademark office action is a notification sent by a USPTO examining attorney to inform you there’s a problem with your chosen trademark or/and the application.
The good news is this isn’t uncommon, and most times, you can resolve the issue(s) by following specific response regulations. It’s imperative you do because otherwise, the USPTO can’t register your trademark.
There are 2 types of trademark office actions: Non-final and final.
A final Office Action is your last opportunity to file your response during the trademark application process.
Structure of a Trademark Office Action
Your trademark Office Action should have 4 main parts:
What you need to know at this stage is the reason the USPTO is refusing your trademark application, so let’s look at the probable causes next.
Reasons for Office Actions and How to Respond
You can receive an office action during your trademark application process for several reasons. For example, the USPTO often sends office actions because of administrative and substantive errors in your application.
Common reasons you’ll receive an office action are:
The term “likelihood of confusion” applies when the USPTO deems your trademark too similar to another pre-registered mark. It refers to when a mark you’re applying for sounds or looks too similar to another trademark and is in the same class of services or goods.
If your office action letter says there’s a likelihood of confusion then you need to look for:
Note the attorney’s exact arguments because you can appeal a refusal. You’ll stand a better chance of winning your appeal when you have proof. But if you’re unsure, it often pays to employ a trademark lawyer at this stage to help you.
When you receive an office action regarding a descriptive or geographic error, it’s not a case of proving whether your trademark is sufficiently different. Here you may have applied for a mark that doesn’t comply with trademark law or isn’t available in your location, meaning you might be out of luck.
You can’t trademark a descriptive word because it describes a product’s characteristics, such as its function, features, quality, ingredients, and purpose of use.
For example, Nike can’t trademark the descriptive term “basketball shoes” for their latest range of Jordan shoes since it describes a product’s function.
Remember: Trademarks exist to differentiate brands, not claim ownership of the function.
Many well-known brands producing goods are geographical indicators. Geographical indicators identify goods from a specific region with a reputation for quality attributed only to that area.
Some examples are Florida’s oranges, Parmesan cheese, Champagne, and Swiss watches. Geographical terms are a separate category of intellectual property that you can register as marks but are more challenging to get than a standard trademark.
Technical errors are simple to make when using the TESS online application website. While it’s avoidable and most errors are fixable, some aren’t and others result in refusal, meaning you’ll have to re-file your application and pay again.
Some mistakes to look out for are:
How to File a Response
Before filing your response, be sure to address all the examiner’s objections because if you miss any, you’ll receive a final office action. And if you miss any the second time around, odds are the USPTO will refuse your application.
You have 2 ways to file a response:
It’s not uncommon for an examining attorney to request applicants to contact them by phone or email to resolve minor technical problems, such as clarifying services or goods, an examiner’s amendment, or priority action.
The USPTO does this to speed up your application process. Be aware that your emails appear on your application record and are viewable on the USPTO website.
If you can’t resolve an office action by email or phone, you’ll have to reply online using the USPTO Trademark Electronic Application System (TEAS) online service.
For final office actions, you can only respond using the TEAS system or file an appeal via the Trademark Trial and Appeal Board.
TEAS response forms:
Only a responsible, proper person can sign your response, which means you, any authorized business member, or a legal professional.
Deadline for Filing a Response
Usually, the deadline for filing your response to an office action is 6 months after receiving the letter; however, it can be shorter. The office action letter should have your deadline printed on it.
Deadline responses aren’t extendible, so don’t miss it because USPTO will view your application as abandoned if you do.
I recommend you check out the following posts to help avoid any further mistakes:
If you’re still unsure, seek advice from a trademark attorney.
Thanks for reading!
This portion of our website is for informational purposes only. Tailor Brands is not a law firm, and none of the information on this website constitutes or is intended to convey legal advice. All statements, opinions, recommendations, and conclusions are solely the expression of the author and provided on an as-is basis. Accordingly, Tailor Brands is not responsible for the information and/or its accuracy or completeness.
Terry is a serial entrepreneur with over 25 years of experience building businesses across multiple industries – construction, real estate, e-commerce, hotelier, and now digital media. When not working, Terry likes to kick back and relax with family, explore Taoism’s mysteries, or savor the taste of fine Italian red wine.