Trademark-Office-ActionsTrademark Office Action

Federal trademark registration is a lengthy process and, more often than not, a trademark applicant will need to respond to a trademark office action.  The purpose of a trademark office action, which is issued by an examining attorney from the USPTO, is to notify the trademark applicant of any problems with the trademark application. This could include reasons why an application is being refused, rejected or what requirements must be satisfied to continue the trademark application process.

If the trademark application has been refused, then the examining attorney will send the individual, business or its attorney, a trademark office action.  The purpose of an trademark office action is to notify the applicant of any problems that arose during the examination process. The office action usually contains one or both of the following: (1) notice of informalities, or (2) basis for rejection/refusal of the trademark. For an office action that contains informalities with the application, this usually involves matters such as attaching an inadequate sample showing how the trademark will be used, or providing insufficient information in order for the examining attorney to determine exactly what the goods provided in the application are.  When the office action states the basis for a refusal of the trademark, the two most common reasons are (1) the trademark will likely cause confusion (likelihood of confusion) with an existing trademark or (2) the trademark is descriptive (trademark descriptiveness).

There are two types of office actions that the USPTO examining attorney will send the applicant: final and non-final actions. A non-final action occurs in the first instance of an issue. The final action is sent when an applicant’s response to the prior office action fails to address or overcome the issues in that action. The only response available for an applicant to the final office action is to either comply with the action or to appeal the final action to the Trademark Trial and Appeal Board.

Not all trademark applications process without problem. If you or your business has been issued an office action from a USPTO examining attorney, let us review your trademark case and determine what type of response can be submitted.

Responding to Trademark Office Action

The typical timeline for a trademark applicant to respond to a trademark office action is six months. If the trademark applicant fails to respond during this six month period, the USPTO examining attorney will abandon the trademark application.  If a trademark application is abandoned, there is a limited opportunity to petition to revive the trademark application; however, most often, the trademark application will not be revived and the trademark owner will lose all of his or her time, money expended in prosecuting the trademark.

The two most popular reasons for a trademark applicant to receive a trademark office action indicating a refusal or rejection of the trademark is (1) likelihood of confusion with an existing mark, or (2) descriptiveness of the proposed trademark.