Whether you’re interested in protecting a well-established brand or you’re starting a new business, filing a trademark application can be a very exciting and positive step toward protecting your intellectual property. While trademark protection is an appealing prospect, the application process can be tricky. There is often the risk that the United States Patent and Trademarks Office (“USPTO”) will issue an office action in response to an application for trademark protection.
An office action is an official letter from the USPTO that lists any problems with your Trademark application. The office action may present a “requirement” or a “refusal” based on the contents of your application or the applied-for mark itself. A requirement requires (naturally) you to revise, fix or provide additional information to the USPTO, while a refusal is a rejection of your application based on some issue that the USPTO’s examining attorney has found.
Additionally, office actions may be final or nonfinal. An office action is non-final if it is the first time the USPTO has reached out to you about the problem. Conversely, if you have already been made aware of the deficiencies in your application and have been given a chance to fix them, the USPTO may issue a final office action giving you one last chance to address the problems.
These are a few common requirements or refusals that will trigger an office action:
To respond to an office action, you can use the Trademark Electronic Application System (“TEAS”). Your response will need to address all legal questions raised in the office action. In your response, you will have to (1) provide the information or make the change requested (such as providing a definite identification of the product or a more appropriate specimen), or (2) argue against the issue raised (such as providing a legal argument that consumers are not likely to confuse your goods and services with that of another).
You have three months to respond to an office action. You may request a three-month extension for a fee, providing for a total of six months to respond. International trademark applications under Section 66(a) of the Madrid Protocol have a six-month deadline. It is very important to meet these deadlines because if you fail to timely file, your application will be denied, and any application fees will not be refunded.
Office actions are a way for the USPTO to adjust your trademark application and cure any defects in your application. The process of drafting and filing an office action response can be complicated and involve several legal arguments. As such, it is always a good idea to reach out to an experienced legal professional to help you with your trademark application.