Responding To Office Actions: Dos & Don’ts For Trademarks

When you submit an application for a trademark to the United States Patent & Trademark Office (USPTO), there is always a possibility of receiving an “office action.” An office action is an official communication from the attorney examining your application which notifies you that there is a problem with your application. In other words, it is a notification that, in order for your trademark application to be successful, you need to correct either an error or omission on your application.

Receiving an office action can be an unpleasant surprise, but this communication does not necessarily mean that your application cannot succeed. In this post, we will state the “dos” and “don’ts” with regard to office actions. If applicants follow these tips,

Do Understand the Purpose of the Action

The USPTO can send you an office action for any number of different reasons. The most common deficiencies which are cited in an office action are omissions, mistakes, or reasons related to the eligibility of your proposed mark. Let’s consider an example: suppose you submit an application for a mark which, according to your description, is strikingly similar to a preexisting mark. The examining attorney at the USPTO may issue an office action because your proposed mark is apparently not distinguishable from this established mark. The bottom line is that you need to understand clearly the underlying reason for the action before you can attempt to rectify it.

Do Respond in a Timely Fashion

You have a limited amount of time to respond to an office action. The USPTO requires a response within six months from the time the office action was created. However, even though this may seem like a long time, you will want to submit a response as quickly as possible. Normally, trademark applications take about eight months to process, but whatever time it takes to correct an office action is typically compounded onto this review. This means that you have a clear incentive to respond to the office action as rapidly as you can.

Don’t Neglect the Substance of the Office Action

As mentioned, the USPTO can send you an office action for a whole variety of reasons. It’s important that you investigate and understand precisely the reasons behind your particular action. Depending on the reason for your action, you may have to do quite a bit of legwork in order to prepare an adequate response. For instance, you may have to develop a solid legal argument as to why your trademark is proprietary; this may be necessary in cases in which your proposed mark is quite similar to another mark. The bottom line is that cannot simply respond to an office action in a formulaic manner, you need to address the specific deficiencies mentioned by the USPTO.

Also, you will want to consider whether your office action is either non-final, or final. A non-final office action means that you haven’t receive an action before, and will have an additional attempt to rectify a problem if your first attempt is unsuccessful. Predictably, a final action means you have one last chance, and so you need to fully correct the problem, or face a rejection of your application.

Don’t Procrastinate Your Response

In many cases, you will need to do considerable research to prepare an adequate response to an office action. This is why the USPTO gives applicants a total of six months to deliver a response. The USPTO gives this amount of time because it is aware of the level of work required for many responses. Don’t think that an adequate response can be whipped up at the last minute. If necessary, hire a qualified trademark lawyer to go over your office action and plot a response. A qualified trademark lawyer will be able to identify what is needed by the USPTO, how to prepare, and how to deliver a proper response.

Contact the Trembly Law Firm for Additional Information On How To Respond To Office Actions

Navigating the ins and outs of trademark law isn’t something which the typical person wants to do alone. If you receive an office action, you should seriously consider hiring a trademark lawyer. To learn more, give the Trembly Law Firm a call at 305-985-4569.

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