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February 6, 2023 | BusinessTrademark

What is An Office Action?

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Author(s)
Carlianna Dengel

Associate Attorney

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.

What is An Office Action? 

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. 

What Are Common Types of Office Actions? 

These are a few common requirements or refusals that will trigger an office action:

  • Likelihood of confusion: The USPTO may issue an office action if the examining attorney believes that your trademark is so similar to a related product or service that there is a “likelihood” that a consumer would be confused about your goods or services as compared to another mark owner’s goods and service.  For example, if you tried to register a big, yellow “M” as a trademark for your new fast-food restaurant, you may run into a likelihood of confusion office action.  See 15 U.S.C. § 1052(d).
  • Requirement for “definite” identification of goods or services: The USPTO may require you to be more specific in describing your product or service.  For instance, you may be asked to identify your product as “shoes” rather than “clothing items.”  More specific descriptions can help the examining attorney–as well as the future consumer– determine whether there is already a similar product or service using a similar trademark.
  • Descriptiveness refusal: A trademark has to be distinctive, so if the USPTO determines that your proposed trademark is simply describing the good or service, the examining attorney may issue an office action.  See 15 U.S.C. § 1052(e).
  • Merely a Surname: Similarly, the trademark cannot be a last name, since it would prevent other people with the same name using it in connection with their own business.  See 15 U.S.C. § 1052(c).
  • Requirement to “disclaim” a part of your trademark: If part of your trademark contains a generic word, phrase or a design that other businesses would need to be able to use in their own goods or services, an office action may require you to state (or “disclaim”) that you do not own the rights to that term or design.
  • Specimen Refusal: As part of the application process, you are asked to provide an actual sample of your use of the goods or services in commerce.  The USPTO refers to these samples as “specimens.”  A specimen for a good can include packaging of the goods you sell, sales displays, or the good itself.  Alternatively, a specimen for services can be an advertisement for the services you provide, signage displaying where services are rendered, a website featuring the services you provide or any form of marketing material showcasing the services being offered.  Any specimen provided must prominently feature the mark.  The USPTO may issue an office action if you do not provide a specimen, the specimen does not match the description or designs in the application or if the trademark on the specimen does not identify the goods or services in a way that the consumer is likely to recognize.

How Should I Respond? 

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).

How Long Do I Have to Respond? 

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.

Conclusion 

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.

Photo by Cytonn Photography on Unsplash
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