If you recently attempted to prepare and file your own trademark application, then there is a good chance that you will (or already have) received a non-final trademark office action from the examining attorney who was assigned to your trademark file. While this might cause you a little panic and anxiety as you are wondering what an office action is anyway and how to you even think about responding, i can assure you that thes are very common and in most cases can be handled without much trouble.
In this post, we'll be reviewing everything you need to know if you receive an office action – what to do, how long you have to respond, and when to call a trademark lawyer for help (I recognize that this last part might be difficult for many entrepreneurs who are trying to DIY their legal work, but this is one area where you really do need the help of an experienced trademark lawyer.
Office actions are a relatively common occurrence for trademark applicants, even those who filed with the assistance of a lawyer. So don't fret!
If your trademark was refused for one of the many reasons we will discuss in just a little bit, I'm here to tell you that it is not the end of the world (in most cases). However, while office actions are a very common part of the trademark registration process, they should still be taken seriously and responded to promptly so as not to put your trademark application at risk.
What Is a Trademark Office Action?
Let's start with the basics… what is a trademark office action (or what are the various types of office actions) anyway?
An office action is an official letter from the examining attorney assigned to your trademark file. Here is how that process works.
After you file your trademark application, it goes into a virtual que. Somewhere around 3-5 months after you file your application, it will be assigned to an examining attorney. This attorney's job is to review your file, conduct a trademark search, make sure there are no legal deficiencies in your application, and take an action on your file.
There are three primary things the examining attorney can do with your file after they complete their review. They can:
- Approve your application for publication (🎉 woohoo! this is the best scenario)
- Issue a “simple” or “non-substantive” office action that asks for minor changes or clarifications to your application.
- Issue a “substantive” office action or “preliminary refusal” that denies your trademark application and gives you the opportunity to respond.
It is entirely common (arguably highly likely) for the examining attorney to issue an office action. Typically, between 60-85% of trademark files will receive at least one office action, meaning that more trademark applications receive an office action than those that don't.
When you receive an office action, you will notice a few things. First, it will have an issue date. The issue date will be used to calculate your response deadline, which is typically 90 days from the issue date, but can be extended (by paying a small fee) for an additional 90 days.
Why is this important?
Because if you either aren't paying attention to your trademark file, or notice that you received an office action but failed to take it seriously and fail to respond, then the consequences are severe. By failing to respond to an office action by the deadline – even minor office actions that an attorney could respond to relatively quickly – you are putting your trademark application at risk of abandonment.
For that reason, it is important that you take all office actions on your file seriously.
Just because you received an office action does NOT mean that your trademark is denied. But it DOES mean that if you fail to respond to it that your application will be abandoned.
Looking for help responding to your trademark office action? Schedule a call today!
Types of Trademark Office Actions
There are several types of office actions that you may encounter as you proceed with your trademark application. Both are equally important and could lead to various legal problems and put your trademark protection at risk if not addressed in a timely fashion. The two main types of office actions are a non-final office action and a final action and each has a number of issues you must be aware of. It is important that you understand the type of office action that you are dealing with so that you can properly respond before the deadline.
Non-Final Office Actions
Non-final office actions are the most common types of correspondence that you will see from the examining attorney and are issued for the first time after the examining attorney reviews your trademark application.
When you receive a non-final office action, you should pay attention to several important items:
- The Issue Date
- Summary of Legal Issues
- Deadline to Respond
First, you will notice the issue date. As explained before, this is the date that is used to calculate the deadline date, which is ninety (90) days from the date that the non-final office action was issued. So for example, I'm writing this on January 8th. The deadline to respond to an office action that was issued on January 8th is April 8th, meaning that your response must be received by 11:59 pm EST on April 8th.
If you do not either respond to the office action by this date, or file an extension for an additional 90 days, then you will be locked out of the USPTO system and a notice of abandonment will issue within a week or so after you fail to respond. (I will talk about what to do if you receive a notice of abandonment in just a little bit).
The next important piece of information in the office action is the summary of the legal issues, followed by the examining attorney's legal arguments in support of the office action. Typically, the examining attorney will let you know at the very beginning of the office action what the legal issues are that you must respond to. Here are a few common issues:
- Likelihood of Confusion – Section 2(d)
- Descriptiveness – Section 2(e)(1)
- Genericness
- Specimen refusals
- Improper identification of goods/services
- Primarily merely a surname
- Problems with the entity/owner or domicile
- Wrong Class listed
Depending on the reason why the USPTO examiner issued the office action, you may want to seek legal advice from a licensed trademark attorney or prepare to file an extension request to allow you additional time to respond properly. Many issues in a first office action can be resolved fairly simply. However, if you receive an office action that has substantive legal issues, such as likelihood of confusion or a genericness refusal, then you definitely need to reach out to a trademark lawyer for assistance.
Final Office Actions
If you either fail to respond to the first office action, or else you do respond but the examining attorney is not persuaded by your arguments in favor of registration, then you will receive a final office action. This is very similar to a non-final office action, except that failure to overcome a Final Office Action means your application will be terminated unless you file an appeal to the trademark trial and appeal board or a request for reconsideration.
The issues you will find in a Final Office Action are identical to the issues you may see in a non-final office action, as is the deadline to file a response.
Examiner's Amendment
There is one type of office action that does require a response and it is called an Examiner's Amendment. Frequently, if there are only one or two minor issues to address with your application, the examining attorney may email you directly to ask if they can correct your application without you taking further action. If you respond by their deadline (frequently just a couple of days after they send out the email) and provide permission for the change, then they may issue an “examiner's amendment” in lieu of a nonfinal office action.
Alternatively, the examining attorney may also issue a letter of suspension to put your file on hold pending the outcome of another trademark registration or prior-filed application. If this happens, you may file a response but are not required to.
Looking for help responding to your office action? Schedule a call today!
Common Reasons the USPTO Issues an Office Action
The following is a list of common reasons that the USPTO may issue an Office Action, and how difficult each is to respond to.
Likelihood of Confusion Refusal
A likelihood of confusion denial under Section 2(d) is one of the most common reasons that trademark applications are denied. While they are not impossible to overcome, you will definitely need the assistance of a trademark lawyer or law firm to assist you in drafting a response.
Many entrepreneurs mistakenly believe that if they have chosen a distinct name that is not already registered as a trademark, then they are free to use that name. But the legal standard for conducting a trademark search is NOT exact match – it is likelihood of confusion. In other words, if there is a prior filed application or pre-existing registration for a trademark that may be confused with your proposed mark, then you are likely to receive a likelihood of confusion denial.
There are two factors that come into play when analyzing a mark for likelihood of confusion. First, how similar are the trademarks themselves (remember, they do NOT need to be exactly the same), and second, how similar are the goods and/or services that are listed your application when compared to the trademark that is cited against you.
The closer the marks are in appearance, sound and overall commercial impression, then the less similar the goods and/or services need to be.
I could write an entire book on how to conduct a likelihood of confusion analysis with many examples, but for now you need to be aware that these are difficult (though not impossible) to overcome, and you will likely need a trademark lawyer to help you in drafting a response.
This is the most common reason that trademark applications get denied and can be avoided by conducting a proper trademark search BEFORE you file your trademark application.
Merely Descriptive or Generic Refusals
Responding to an argument that your mark is merely descriptive or even generic can be deceptively tricky. You must be able to explain why your trademark is not descriptive.
If your trademark truly is generic, and you are unable to overcome the office action, then your trademark will be denied as generic trademarks are not entitle to trademark protections.
On the other hand, if your mark is merely descriptive, then you may be able to amend your application to the supplemental registry if you are currently using your trademark in commerce. If you filed an intent to use (otherwise known as a 1(b) application), then you cannot amend to the supplemental register until you have filed a statement of use showing your trademark is engaged in commerce.
If you are able to successfully amend your application to the supplemental register, you may reapply to the principal register after using your trademark in commerce for 5 years. This is known as “acquiring distinctiveness”.
Specimen Refusals
Many times, there is nothing wrong with an application at all, except that the specimen submitted to show proof of use in commerce is not legally sufficient. This could happen if you filed a specimen that shows use of the mark with the wrong products or services, or if your evidence does not show use of the mark you applied for. If your specimen shows incorrect use in commerce, then a non-final office action will be issued.
In these cases, it is vital that you seek the help of a trademark lawyer for assistance.
Identification of Goods/Services Issues
This is another very common reason that an office action can issue, but is relatively easy to fix (in most cases). If you included over broad or improper wording in your descriptions of the products or services you offer in connection with your trademark, then the examining attorney may issue an office action. Conveniently, however, the examining attorney will let you know what language you can use to fix this problem.
Where non-lawyers run into problems is when they don't pay attention to the guidance from the examining attorney and try to change their description entirely, or just fail to respond. I see this quite frequently when clients file a trademark application for one product or service, but then decide they would like to include a different product or service on their trademark application after we receive an office action.
This is one of the reasons that we counsel clients to list as many products or services as they reasonably intend to sell under their trademark when we file their application. You are permitted to remove products or services from your trademark application after you submit your filing, but you cannot amend your description to include products or services that were not included when you initially filed.
Technical / Procedural Issues
As mentioned before, the examining attorney will review your application to make sure it is legally sufficient. If there are technical issues with your application, such as problems with your signature, entity mismatches, or you chose the wrong class of goods or services when you prepared your application, then an office action may issue.
If you don't understand what you did wrong, then we recommend reaching out to a trademark lawyer for assistance in responding to your trademark office action.
How Long Do You Have to Respond to an Office Action?
If you file your own trademark application, it is imperative that you pay close attention to your emails for communications from the USPTO. Prior to December 3, 2022, you had up to six months to respond to an office action. However, the current rule is that you only have 3 months to file a response, with an option to request one three month extension (if you pay a fee).
If you miss this deadline, your application will be deemed abandoned and you will have 2 months to file a request to reinstate your application (again, there is a filing fee). You will also have to prepare a complete response to the office action when you request your reinstatement. Trust me, this is not a position you want to find yourself in.
An office action is a serious legal filing and must be taken seriously. If you do nothing, you will put your trademark rights at risk.
How to Respond to a Trademark Office Action
How you respond to an office action will depend entirely on what type of correspondence you received. If you received a substantive office action, such as a likelihood of confusion denial, then I recommend you speak with a trademark attorney to review your legal options. Many times, they will be able to give you an honest assessment of your chances to overcome the office action, and the potential costs to do so.
If you do decide to draft your own response, it is imperative that you address all the issues raised by the office action. If you only respond in part, then you will receive a final office action even if you were able to overcome some of the initial reasons for the refusal.
Your response must provide sufficient evidence to support your arguments, and you should focus on persuading the examining attorney that your legal arguments are sound which is why hiring a lawyer is a prudent choice, assuming that you have a reasonable chance of overcoming the office action.
For more minor issues (i.e. non-substantive office actions), you must focus on giving the examining attorney to proper information such that they can allow your application to proceed.
Copy and paste or AI generated responses will typically fail because they may not address all the issues raised by the office action and may cite incorrect legal precedent. As such, they should be avoided.
Can You Respond Yourself—or Do You Need a Lawyer?
If the office action is non-substantive, i.e. if you merely need to provide a domicile address, disclaim a descriptive term, or update your description of goods/services, then you may be able to file a response on your own.
But, as explained earlier, if the issues are more complex then hiring an experienced trademark attorney is a prudent and wise investment. If you aren't sure whether you need to hire a lawyer or not, then I recommend calling our office and scheduling a consultation to review your office action obtain some additional guidance.
No two office actions are the same, so some strategic planning with the help of a lawyer will go a long way. Furthermore, you should weigh the cost of trying to DIY this (which could result in a rejection and necessitate a new trademark filing), vs. hiring a lawyer for help.
Time is of the essence in responding to trademark office action. Have questions? Schedule a call with our office today!
What Happens After You Respond?
After you respond, you will likely need to wait for 30-60 days before you know whether the examining attorney has approved your application for publication. There are three possible outcomes after you file your response.
- The examining attorney will approve your application for publication. This is what you want to see happen and it means that the office action has been resolved in your favor.
- A second office action may issue. While confusing to most, it is possible that your file could be assigned to a new attorney or the assigned attorney took another look at your file and determined there were more issues that need to be resolved. If so, you will have to file a response to the second action.
- A final office action could issue. If your arguments are not sufficiently persuasive, the examining attorney will notify you of such and issue a final office action that you will then need to respond to.
For more information on the trademark process timeline, click here.
Consequences of Ignoring or Mishandling an Office Action
There are several consequences to either ignoring an office action, or responding in a way that is unpersuasive.
The first consequence is that your application will be abandoned. When you receive a notice of abandonment, you will have 2 months to file a request to reinstate your trademark application. This comes with additional application fees and must include a full response to all issues listed in the original office action.
Secondly, once your application is abandoned, you will lose all fees you paid in connection with filing your trademark application, which can be substantial. Currently, the filing fees are $350 per class. So if you filed with more than one class, these fees will quickly add up.
Third, you will lose your priority date, i.e. the date you filed your trademark application. In other words, if someone filed a trademark application after you for the same or a similar trademark (potentially a competitor of yours), then their application will now take priority over yours, even if you elect to file a new trademark application.
Lastly, you are putting your brand at risk, which is the whole point of filing a trademark application in the first place.
Don't make a silly mistake that jeopardizes your trademark… Call our office today!
Practical Takeaways
The bottom line is that office actions are a common part of the trademark application process. Providing a timely response that adequately addresses all of the legal issues raised by the examining attorney is essential to overcoming the office action and moving your application closer to a full registration.
Getting help early (i.e. don't wait until a few days before your response deadline) is vitally important so that you don't lose important legal rights.
Our office handles office actions on a flat fee basis, which will vary depending on the number of issues listed on the office action, and how likely we believe it is that we can overcome your office action for you. We don't like taking money from clients if we don't feel confident that we can overcome the office action.
If you have received an Office Action, and are looking for a trademark attorney to provide a professional review and opinion, please don't hesitate to reach out to our office at (919) 460-5422 or schedule a complimentary intake call here.
