Office actions are a potential obstacle to the successful registration of your trademark. After filing a trademark application, you might receive a trademark office action from the examining attorney assigned to your application. These can raise a number of issues, which can range from trivial to nearly impossible to overcome. But no matter what issues the examining attorney may have with your application, you must file a response or your application will go abandoned. That response generally must to be filed within three months of the date you received the office action.
Minor or “Administrative” Issues
Let’s start with some of the more common “minor” issues that might be raised in a trademark office action. Many of these are administrative issues that are fairly easy to resolve. They typically do not require any kind of argument to the trademark examining attorney.
One common issue is that the proper classes have not been designated for the goods and services listed in the application. The examining attorney could also require changes to the description of your goods and services. Usually they want you to make the identification more specific. The trademark examining attorney may require the applicant to disclaim any generic or descriptive parts of the mark. If the mark uses a name, the examining attorney may need to know if the name identifies a living person.
These issues, when properly addressed by a trademark office action response, are typically not going to prevent registration. However, trying to handle them yourself may prove to be too difficult.
Major or “Substantive” Rejections
On the other hand, there are some issues the trademark examining attorney may raise that can be difficult to overcome without a strong legal argument. For example, if the trademark examining attorney assigned to your application believes that your trademark is likely to be confused with the trademark in an existing registration or pending application, they will issue a likelihood of confusion refusal that will not be easy to overcome. This is why I recommend performing a trademark search before filing an application. They also might refuse registration on the basis that your mark is generic or descriptive.
If you hire a trademark attorney, they can give you a good idea as to whether you are likely to face these issues before you file your application, as well. If your trademark office action is related to one of these issues, you will most likely need to file an argument to try to persuade the trademark examining attorney to withdraw their refusal. Successfully making this type of argument can be difficult even for an experienced attorney. It is something that you will almost certainly want a trademark attorney to prepare and file on your behalf.
Filing an Office Action Response
If your trademark office action response successfully addresses all the issues, your trademark application will be approved for publication. If not, the examining attorney will issue a final office action. Your first option at this point would be to file an appeal. That would go to the Trademark Trial and Appeal Board. You may also want to file a Request for Reconsideration.
Your trademark office action response can be filed on the U.S. Patent & Trademark Office’s website. Use the Trademark Electronic Application System (TEAS) to file the response. Of course, while the response form is available for you to use in TEAS, I would definitely recommend having an experienced trademark attorney file the response on your behalf. Doing so ensures that you will understand the issues raised, and that your response will address each of them. It can also be easy to make costly mistakes if you have never filed a response before.
Have You Received a Trademark Office Action? Are You Unsure How You Should Respond?
If you have received a trademark office action, I would be happy to review it with you. Our discussion can help shine some light on any issues that will need to be addressed. If you are interested in speaking with me about an office action, or any other trademark matter, please feel free to call me at (480) 360-3499, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.