What to Do if Your Trademark Application Requires Office Actions

trademark application

Once your business has developed a unique branded product or service, you can protect your company’s rights to exclusive use of that brand with a trademark application. Simply placing a logo or tagline on your product and entering the stream of commerce is not enough. Filing a trademark application with the United States Patent and Trademark Office (USPTO) is a complicated process that requires thorough research and legal skill.

Basic USPTO Trademark Registration Process

Before you begin the trademark application process, you need to create a unique brand which could be your company name, a stylistic logo, a catchy tagline, or another distinctive mark that sets your company apart from other products or services in the marketplace. Then you must complete a thorough USPTO trademark search to determine if your mark (or something similar) is already in use in your industry. An experienced trademark attorney can be extremely helpful in this phase.

After completing the trademark search, you will complete and file a trademark application to register your unique mark with the USPTO. The online application requests specific information within the parameters of the form including choosing the correct category for your mark, the proper industry to register for, a sample of your logo or mark, and more. Again, a knowledgeable trademark lawyer can complete your application with the necessary information as required by the USPTO.

What Happens After Your Application is Filed

Approximately three months after filing, your trademark application will be considered by a reviewing attorney. The trademark will be registered if:

  • All required information was submitted properly;
  • Your proposed mark is unique from previously registered marks;
  • The product or service class(es) were correctly identified;
  • Sufficient and consistent details were provided; and
  • All other USPTO requirements are met.

However, if there are any errors, inconsistencies, or other problems you will receive a USPTO office action letter. If you are not already working with a skilled trademark attorney who can prepare your official USPTO response to office action, now is the time to get one involved.

Nonfinal Versus Final Office Actions

Usually, the first communication from the USPTO will be a “nonfinal office action” that describes the reason for rejection and possible solutions. This nonfinal office action is an example of a typical USPTO letter. If you receive a nonfinal office action, you must respond to every issue raised by the reviewing attorney. Your trademark application will be delayed until you provide an official USPTO response to office action.

If you don’t respond to all of the issues raised or your response to the nonfinal office action is not sufficient to overcome the USPTO’s objections, you will receive a final office action letter that explains the remaining problems and how they must be resolved. Take a look at this final office action letter for an example of the complexities your company may face during this process.

You can either comply with the requirements, abandon your application, or file an appeal with the Trademark Trial and Appeal Board. A professional trademark attorney can explain your chances of a successful appeal.

Both forms of office action specify a response deadline that cannot be extended. Do not miss this deadline or your application will be deemed abandoned, you will have to start from the beginning, and you will not receive a refund of your application costs.

Situations Where You Might Receive a USPTO Office Action Letter

Trademark applications are complicated, extremely particular, and require extensive research and specific details. Some scenarios that have triggered an office action include:

  • The proposed wording is too generic or uses a geographic location;
  • The mark shown on the submitted drawing does not match the mark on the specimen;
  • The specimen provided does not show the mark being used in the desired class;
  • A failure to provide the necessary proof to support the application;
  • Improper identification of the services covered;
  • An incomplete description of the proposed mark;
  • The drawing is of low quality and cannot be reproduced or is otherwise unacceptable; and, most often
  • A likelihood of confusion between the proposed mark and a previously registered mark.

Many initial applications are refused due to technicalities or other minor problems. These simple issues may be resolved by communicating with the USPTO reviewing attorney or submitting a clear version of the proposed mark. However, the USPTO attorney can only clarify the office action demands and will not provide legal advice.

More complicated issues such as a trademark application that doesn’t provide a direct association between the proposed mark and the desired industry or service class where the mark would be protected may require in-depth legal argument to resolve the pending office action. You may need prior trademark case law or detailed legal knowledge to support your argument that your mark is different from another or applies to a different category of product or service. An experienced trademark lawyer is your best ally at this point in the process.

If You Received a USPTO Office Action, Fear Not. We Can Help.

Office actions are not a trademark application rejection. They are simply a routine part of trademark registration and an opportunity to revise your trademark application to comply with current law. To reduce the chance of receiving an office action, it’s helpful to work with a trained trademark attorney early on.

To ensure your trademark application addresses all requests and meets all requirements listed in a USPTO office action, turn to the knowledgeable attorneys at the Trademark Lawyer Law Firm, PLLC to guide you through the process. We offer a variety of trademark services for many industries of all sizes. We have successfully registered more than 5,500 trademarks and we always provide top-notch legal services at reasonable rates. Contact us today to schedule a complimentary 15-minute consultation with a trademark attorney concerning your office action response.

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What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.

A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.

In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application:

Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.

Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.