If you or your business has filed an application with the United States Patent and Trademark Office (“USPTO”) to register a trademark, at some point in the review process, you might receive an “Office Action” from the examining attorney. An “office action” sounds mysterious, but an office action is simply a formal communication — a notice or letter — from the USPTO. Broadly, an office action can relate to matters of procedure — such as a fee has not been paid or a form has not been completed — or it can relate to substantive legal matters — such as the proposed trademark cannot be registered for various reasons.

Timely responses to USPTO office actions are required

As noted, an office action is a formal communication from the USPTO. As such, the Trademark Office expects and requires a response to the office action and a correction of whatever deficiency is identified. For example, if a fee has not been paid, the applicant should not only pay the required fee, but send a response to the office showing proof of payment. Likewise, if a form has not been completed or evidence is missing from the application, then the form should be completed, the additional documentation added, and an official response stating what has been done.

Generally speaking, an application to register a trademark will be “paused” after an office action has been sent. The application “starts again” when the response is received. This means that, if an official response is never received, the application will languish and eventually be deemed to be abandoned.

Note further that an official response should be timely. Usually, the Trademark Office will give six months for a response (with extensions granted under some circumstances). However, the deadlines can be shorter.

How to respond to a USPTO office actions

As the examples discussed above indicated, how to respond to a USPTO office action depends on what the office action says. Procedural issues are relatively easy to “fix” — pay the fee, complete the form, get the signature, upload the documents, ask for more time, etc.

On the other hand, substantive issues can be much more difficult to handle and might involve the need for significant legal expertise. For example, if the examining attorney believes the proposed trademark is unregistrable, a lengthy and well-argued written legal response may be needed to persuade the examining attorney that he or she is in error. Further, at such a point, applicants and trademark counsel may need to “think strategically” about whether to appeal and how to position for the best chance to win an appeal if a denial is forthcoming from the examining attorney. Alternatively, the best response might be to modify the trademark and amend the application or to withdraw the application entirely. Depending on the “problem,” other potential solutions may be available such as entering a licensing agreement or a coexistence agreement with another trademark holder.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.