If you’ve received an Office action from the United States Patent & Trademark Office (USPTO) after you’ve submitted your trademark application, you may very well be wondering “What do I do now?” The USPTO, by issuing an Office action, is pointing out a problem with your application – one that may lead to its refusal if not addressed promptly and correctly. It’s important in such matters to respond with the complete, correct information that the USPTO attorney examining your application needs in order to take further steps toward registering your trademark. If you do not respond properly to address the problem indicated in the Office action, it can become much more difficult to get your trademark approved.
To be more specific about the types of Office Actions you might receive, essentially the USPTO is pointing out an omission, an error, or a reason that your mark may be refused based on the grounds of the trademark law itself (typically on account of the likelihood of confusion with an existing mark). Whether you prepared your trademark application on your own, or retained the services of a trademark attorney, at this stage in the process it is important that you consult with an expert in the field of trademark law in order to be sure that you’re correctly addressing the issue at hand. You want to avoid a situation where you do not fully or properly rectify the reason for the Office action. A trademark attorney will be experienced in the right way to address such issues in order to move past the Office action and give yourself a better chance of a successful application. In order to have a better idea of what the next steps for your application will be, here are some ways to properly respond to an Office action.
Adhere to the timeline for responding to the Office action.
It’s important to respond to your Office action as soon as possible. The USPTO requires a response within six months, but there is often a reasonable amount of background work and preparation that will go into the response, so you need to begin the process right away. Depending on the details of the Office action, your trademark attorney may need to conduct research and work with you on the details of your mark in order to provide the strongest possible response. Give yourself a greater chance of success by accounting for that time.
Understand the new time frame for your application
Most trademark applications are approved within eight months of the filing – provided that the USPTO examining attorney does not issue any Office actions. Office actions will delay your application’s timeline, and the longer you wait to respond, the longer you’ll have to wait for your application’s eventual approval. Remember that any Office action will inevitably delay your application, but you can minimize those delays with a timely response.
Know the different reasons behind Office actions
The USPTO may issue an administrative Office action, or a substantive Office action. Administrative Office actions come as a result of an error, omission, or inadequate or unclear information about your mark or your product/service. Some examples might be an improper trademark specimen that does not illustrate how your mark will be used to identify you as the source of your product, or an incorrect or incomplete classification of your mark. Administrative Office actions require you to provide more information or clarify something on your application, and it’s important to remember that a trademark attorney will be well-versed in exactly what kind of information the USPTO examining attorney needs in order to consider your application for approval. The examining attorney looks at your product or service differently than you do – what may seem like complete information to you may not be adequate for the purposes of the USPTO.
A substantive Office action means that the USPTO examining attorney does not see your mark as fit for approval on legal grounds – often, the likelihood of confusion with another mark. In this case, your trademark attorney will need to present a legal argument as to the propriety of your mark – why it isn’t confusingly similar to an existing one, and why you should be able to claim the right of ownership of the mark. Trademark law is not cut-and-dried – presenting a legal argument is often a case not only of researching facts to support your case, but also knowing how to craft an argument to suit what the USPTO typically looks for in order to move forward with approval.
Be aware of final vs. non-final Office actions
A non-final Office action is your first notice of the problem with your application – it’s your initial chance to correct, amend, or clarify the reason why the examining attorney could not approve your application in its current state (non-final Office actions may be either administrative or substantive). Essentially, it is your chance to present an argument to your examining attorney. A final Office action, on the other hand, means that your application is in final review. On a final Office action, the examiner is giving you one final opportunity to fix the error in your application. If you fail to respond properly your application can be denied and you will lose all priority on your trademark. That being said, when responding to a final office action you should also consider filing a notice of appeal to the Trademark Trial and Appeal Board. If the examiner continues the denial of your application, you can then submit an appeal to the Trademark Trial and Appeal Board. These types of appeals are much more involved and may require intricate arguments as to the legal grounds for your mark. In these cases, experience in specific trademark matters is critical to your chances for success, and the assistance of a specialized trademark attorney can be critical.