Trademark Office Actions

Office Actions

After your trademark application is filed with the United States Patent and Trademark Office (USPTO) an examining attorney will review the application to determine whether it complies with all applicable rules and statutes, and includes all required fees.

A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter – an Office Action - explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If the examining attorney sends an Office Action, the applicant’s response to the Office Action must be received in the Office within six months of the mailing date of the Office Action, or the application will be declared abandoned. A trademark owner will lose his or her intellectual property rights in the mark if it is declared abandoned. Moreover, if the applicant’s response does not overcome all objections in an Office Action, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.

Office Actions typically fall into two categories: substantive objections and procedural/non-substantive objections. An example of a substantive objection is an Office Action objection based on the fact that a proposed trademark merely describes the goods or services sold in connection with the trademark. Descriptive trademarks are only eligible for registration in certain circumstances. A response to this Office Action would require a thoughtful legal argument to be made on behalf of the trademark holder in order to persuade the examining attorney that the mark should be registered even though it is a "descriptive mark."

How We Handle Office Actions Responses for Our Clients

To save you time and money we typically separate Office Action responses into two phases. First, we carefully review your Office Action and provide you with analysis and a recommended course of action. The second part is the implementation phase, where we implement the recommended course of action. Because some objections likely will not be overcome, breaking up the process in this manner could save you on office and attorney fees. Moreover, it gives you an opportunity to consider your options carefully and make an informed decision based on your budget and needs.