How to Handle a USPTO Office Action

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Filing a trademark application is not always a smooth ride. Submitting an application with a high likelihood of success requires proper description and classification of your services/products, proper vetting of your trademark for availability, proper use in the marketplace and much more. While these essentials of a well-drafted trademark application are easy to list, they tend to be more difficult to effectuate in practice and are often overlooked. When these items are overlooked, the registration process can become problematic very quickly. Let's briefly discuss office actions, what they are, why applicants receive them, and what it means for your trademark application.

WHAT IS IT AND WHY DID I RECEIVE ONE?

Whenever you submit a trademark application to the United States Patent & Trademark Office (USPTO), you are given an assigned trademark examiner responsible for the review of your application. Your assigned examiner will conduct a detailed review of your application and determine the registrability of the mark, whether the application complies with Trademark Act and Office Rules, and whether the application meets the necessary procedural requirements. If your examiner finds any issues with your trademark application, they are going to send you a letter entitled an "office action". Office action letters tend to look something like this but can vary based on the issues highlighted by the trademark examiner. 

WHAT IF I DON'T UNDERSTAND THE OFFICE ACTION?

When you have received an office action it is critical that you read it in full, and if you do not understand what the office action is telling you, you can reach out to your trademark examiner directly. Their information will be listed somewhere near the bottom of the office action letter. Be advised, however, that trademark examiners cannot give you advice about your application. They can only explain why you received the office action and what it means substantively and procedurally for your application.

WHAT DO I DO NEXT?

If you want your trademark to eventually mature to registration you must respond to the office action and address every issue highlighted by the trademark examiner. The USPTO provides a 6 month period to respond to an office action. Failure to submit a full and complete response within the allotted 6 month period will result in the abandonment of your application. 

HOW DO I RESPOND?

The type of response required varies according to the type of office action. Certain office actions will only address procedural errors or request nominal amendments to your application while others will require a finessed legal response and some heavy lifting. Consulting with an experienced trademark attorney can save you a headache and ensure the hundreds of dollars in application fees are not wasted. 


Questions?

Hawkins IP is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, reach out and let's chat.

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