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Trademark Office Actions

A trademark office action is a notice sent from the United States Patent and Trademark Office to a trademark registration applicant. An office action occurs when there’s an issue with a requested trademark or the application itself. Most office actions require a response from the applicant in order for the application to move forward.

Trademark office actions can be tough to grasp, so we’ve answered common questions about them here.

This article will cover:

Types of Trademark Office Actions

There are several types of trademark office actions: procedural, substantive, nonfinal, and final. At their core, these all do the same thing—refuse your trademark application. Refusal might sound scary, but office actions don’t necessarily mean your trademark is a lost cause.

To understand the severity of the office action in question, you first need to understand the type of action you’ve been issued.

Note: If you receive and office action, the USPTO won’t include the words “procedural” or “substantive” in your letter. These are words we (and pretty much everyone else) use to better categorize office actions.

Procedural Office Actions

Procedural office actions usually relate to errors and omissions within the trademark application. Common mistakes that can lead to procedural office actions include:

    • Missing or incorrect applicant information. For example, if there’s a typo in the business’s name.
    • Not including a disclaimer. A disclaimer states that you do not claim exclusive rights to certain common or descriptive words/images in your mark. Some trademark applications need to include a disclaimer.
    • Including an invalid specimen (or no specimen at all). All use in commerce trademark applications must include examples of the mark being used alongside the goods/services it promotes.
    • Listing the wrong trademark class. Trademark applications must correctly identify the class(es) of goods/services a mark is promoting. In relation to this, the product description(s) must be accurate.

It’s surprisingly easy to end up with a procedural office action—even established businesses with legal teams can find themselves navigating a response. For example, Netflix® received an office action on one of their trademark applications because the goods in question were not sufficiently described. The problem was remedied and the application went on to registration.

Substantive Office Actions

A substantive office action occurs when the USPTO identifies an issue with a requested trademark. Substantive office actions often require legal arguments to resolve. Two common substantive refusal reasons are “likelihood of confusion” and “merely descriptive.”

    • Likelihood of Confusion. Likelihood of confusion means the USPTO has determined consumers might confuse your mark with a different registered mark. For likelihood of confusion to exist, there must be overlap between the marks and between the goods/services promoted by the marks. Let’s say you’re trying to trademark a business name, Skyline Arborists, for your tree trimming and removal business. If Skyline Landscapers is already trademarked, this could result in a likelihood of confusion, since tree maintenance and landscaping are related industries.
    • Mere Descriptiveness. If the USPTO decides a mark is merely descriptive, that means the mark closely describes the goods/services it promotes. (The USPTO isn’t keen on this. They’re even less keen on generic marks, which say exactly what’s for sale.) A car repair shop called Fixin’ Brakes & Motors could be labeled merely descriptive since the mark describes basic functions of the service.

Nonfinal and Final Office Actions

As procedural and substantive office actions move through the examination process, they will be labeled as either nonfinal or final by the USPTO.

    • Nonfinal office actions point out an issue with an application/trademark for the first time.
    • Final office actions address an issue with an application/trademark for the last time. Receiving a final office action means you didn’t adequately respond to a nonfinal office action. Responding inadequately to a final office action results in an abandoned trademark application unless you file an appeal with the Trademark Trial and Appeal Board. Prior to filing an appeal, you can also submit a Request for Reconsideration.

Learn more about our Trademark Service, which includes responses to procedural office actions.

Responding to a Trademark Office Action

Responding to a trademark office action can be a complicated process that often calls for the help of a trademark attorney.

Office actions are filled with legalese and jargon—experienced trademark attorneys know how to interpret office actions, research potential solutions, and respond with the legal arguments and case law that may be necessary to appease the USPTO. Learn more about how our attorneys can help you through this process.

For those who decide to travel the office action road alone, the most important word in your vocabulary is “deadline.”

How do I respond to an office action?

To respond to a trademark office action, first identify the nature of the refusal. It can be as simple as correcting a typo, or as complex as writing a legal argument about why the USPTO incorrectly issued a likelihood of confusion refusal.

The letter from the USPTO will include instructions for how to respond. You will likely submit a response via the Trademark Electronic Application System (TEAS), though you may have the option to respond by phone, email, or mail.

How long do I have to respond to a trademark office action?

Office action responses are typically due within three months of the notice’s issue date, with the option to extend an extra three months for $125. However, other deadlines may apply. The office action letter will provide a deadline.

What if I miss the office action response deadline?

Don’t do it! Responding to an office action outside the given time frame can lead to the USPTO abandoning your application. When this happens, you have two choices if you wish to continue with registration:

    • File a Petition to Revive, pay $100, and assert that the response failure was unintentional
    • Start the application process over from the beginning

Trademark Office Action FAQs

How does the office action process work?

After a trademark application is filed, it lands on the desk of a USPTO examining attorney. The attorney reviews the application, noting any errors, omissions, or other legal issues. Any issues will be cited as “refusals” in a formal office action letter. The letter is sent (typically by email) to the trademark applicant or their attorney. From there, the applicant (or their attorney) responds, and a few scenarios could unfold:

  • If the examining attorney decides the issues have been sufficiently addressed, the application moves forward.
  • If the current problems are resolved but a new problem is raised, a new nonfinal office action will be sent.
  • If the original problems are not adequately addressed, a final office action will be sent, providing the applicant one more chance to respond. If adequate responses are not received, the application will be abandoned.

Do all trademark applications receive office actions?

Not all trademark applications result in office actions, but many do. The probability of receiving an office action goes down if a trademark attorney helps file your application.

Are descriptive marks always refused?

Not always. Descriptive marks (those that merely describe an element of the good/service they promote) can potentially be registered if they’ve been in use for five or more years, or have otherwise acquired “distinctiveness.” (A mark is distinctive if it clearly identifies a good/service as coming from a specific source.)

When are office actions issued?

The USPTO typically issues a first, nonfinal trademark office action within 8.5 months of an application being filed, though this timeline is subject to change. (Check out their current processing times.)

How much does an office action response cost?

The cost to respond to an office action depends on the complexity of the action. The USPTO doesn’t charge fees for office actions, but certain response filings—such as a Petition for Expungement or Reexaminationincur fees as high as $400. You may also be required to pay fees to remedy problems raised by certain office actions. For example, if you submit a TEAS Plus application but fail to meet all the requirements, you’ll need to pay $100 to switch to TEAS Standard.

But the main costs to consider in regard to office actions are attorney fees. At Northwest, we include procedural office action responses in our Trademark Service. For substantive office actions, we refer clients to our law firm, Law on Call.

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*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.

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