Trademark Office Actions.

What now? :(

Don’t fret.

Many applications receive Office Actions. They are typically more of a speed bump rather than a roadblock.

The USPTO defines an Office Action as an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all outstanding problems in the Office Action before they can register your trademark. Procedural Office Actions are not typically a huge reason for panic, but they can be challenging to maneuver. It is highly recommended to have a licensed U.S. attorney handle the Office Action for you to ensure your application is successful.

If you receive an Office Action, the applicant is typically given six months to cure the application’s defects. Many times the Office Action can be as simple as fixing the color description, fixing the design description, or disclaiming certain descriptive words in the mark.

Substantive Office Actions

There are more serious substantive Office Actions that are harder to overcome. These are initial refusals based on the likelihood of confusion, genericness, or mere descriptiveness. In this instance, the applicant will need to present evidence and a legal argument to overcome this rejection. The examining attorney will review the appeal and make a decision. This can be appealed to the Trademark Trial and Appeal Board if your arguments are not accepted.

Office Action Correction Services

Office Actions are an everyday occurrence, if you received an Office Action and would like assistance, please contact us for a free analysis of your case or head over to our services page here!