The Trademark Registration Process – What is an Office Action?

After you file a trademark application the United States Patent and Trademark Office (“USPTO”) may issue something called an office action. When an office action is issued on your trademark filing, this can be as serious as a refusal of your trademark application, or, simply a request to amend something in the application. At Gerben Law Firm we respond to any non-substantive office actions at no charge (for existing clients), and below we’ll go over a few basic examples of these types of office actions. These office actions are the type that require an amendment to the application, and, are not a refusal of your trademark filing.

To start, let’s review the trademark registration process on a macro scale. Let’s say your company is located in Maryland and you want to file an application. First you would file the trademark application with the USPTO either directly or by retaining a law firm. When your application is sent to the USPTO it is reviewed by an attorney (known as an “examining attorney”) who works for the United States Patent and Trademark Office. If the examining attorney feels there is a problem with your application (or something which needs further clarification) they will issue an “office action.”

Office actions can reference any part of the trademark application. If, for instance, your company is located in Maryland and you did not meet a technical requirement in the initial trademark filing to show that your company is a corporation or LLC in the state of Maryland, an office action will be issued. In other instances, the USPTO examiner could ask for a more specific definition of the products or services your company offers. While there are many more types of basic office actions they all act to slow down the trademark registration process. For this reason, we do our best to draft the initial trademark filing to meet all the USPTO’s requirements. By using an experienced trademark attorney, you can usually cut down on the chances you will receive an office action on your trademark application.

The other type of office action that can be issued is a “substantive” office action. This is the type of office action that is generally a refusal of your trademark due to a similarity with a third party’s pre-existing application or registration. For instance, let’s say you were selling milk products and called your company “Maryland’s Milk Town”. If, a pre-existing trademark for “Maryland’s Soy Town” was already registered, there would be a high chance that your trademark application would be rejected due to a likelihood of confusion.

As trademark attorneys who work with the USPTO daily, we have developed an experienced eye for all the potential issues that could lead to the issuing of an office action on your trademark. If you choose to hire our trademark law firm to assist you with the trademark registration process, we will assist you in drafting an application that will avoid many of the common mistakes that lead to the issuance of an office action.