What is Trademark Office Action?
A trademark office action is a letter that an examining attorney from the USPTO (U.S. Patent and Trademark Office) sends to a trademark registration applicant, informing them of any issues in their application. Responding to this letter is important to resolve problems quickly.
Read the rest of this article to explore trademark office actions in greater detail and how a lawyer can help you deal with them.
Why are Trademark Registration Applications Rejected?
There are various reasons why your trademark registration application could be rejected or you could receive a trademark office action requiring additional information. Some of the most common reasons include the following.
Requirement for Definite Goods or Services Identification
If your goods or services description is vague or confusing, it will have to be revised. Make the description clear and accurate. It has to be “definite” so make it specific while avoiding jargon that can be confusing.
Requirements to Disclaim a Portion of Your Trademark
If a design or word in your trademark can’t be registered, you’ll have to submit a disclaimer. This statement explains that you don’t own exclusive rights to that element. It ensures that other businesses using that specific term, such as “cafe,” can also describe their goods or services without litigation risks.
Specimen Refusal
A specimen is required in a trademark registration application. It refers to a sample of how you are using the trademark with your goods or services. An examining attorney might decide that the specimen could be improved. If you didn’t include a specimen, you will have to submit one.
Section 2(d) “Likelihood of Confusion” Refusal
This refusal occurs when an examining attorney decides that your trademark is too similar to an already registered trademark on the USPTO database.
Section 2(e)(1) “Descriptiveness” Refusal
If an examining attorney has evidence that the text or design you used in your trademark only describes a specific part of your goods or services, they will refuse the application.
What are Common Types of a Trademark Office Action?
A trademark office action can include one or more of the following:
- Requirements. These are legal problems you have to fix in the application. It can require straightforward changes, such as better describing the goods or services you offer.
- Refusals. These are legal rejections to your applications, such as because the trademark you want to register is too similar to one that already exists.
Here are other types of office actions, and not all of them require responses:
- Examiner’s amendment. This confirms in writing a change to your application that’s been authorized by email or phone. It doesn’t require a response from you.
- Priority action. This confirms in writing a previous conversation with an examining attorney via email or phone about any legal issues with your trademark registration application. The action will include details about the legal issues and how you can fix them. You must respond within three months.
- Suspension letter. If your application is put on hold, you’ll receive a suspension letter. The examining attorney might be waiting for other information before continuing with the registration, unless the suspension is caused by a conflicting trademark issue.
- Suspension inquiry. This means that you need to provide additional information about why your application was suspended so the examining attorney can figure out if suspension should continue. This is common if your application has been suspended for six months or longer. You must respond within three months.
- Notice of incomplete response. If you submit a response to an office action that isn’t signed by someone with the legal authority to, you will have to resubmit a signature, typically within 30 days.
How Can You Respond to a Trademark Office Action?
You can respond to a trademark office action via email, phone, or online. Here’s what to know.
- Email or phone. The examining attorney could suggest these methods of response to address minor issues with your trademark application.
- Respond via the Trademark Electronic Application System (TEAS). Nonfinal and final office actions can be replied to by submitting the appropriate TEAS form. Make sure your form is signed by an authorized person, such as yourself if you’re submitting an individual application or a general partner for a partnership application.
Do You Need a Lawyer to Help You with a Trademark Office Action?
If you’re dealing with a minor revision to your trademark registration application, you can probably deal with it yourself, such as if it’s a typo or an incorrect goods/services description.
However, it’s recommended to hire a lawyer if you’re dealing with a more serious office action, such as if you need to provide supporting documents or you’re unsure of how to respond to the letter.
A trademark lawyer can help you in various ways when responding to trademark office actions, such as by:
- Creating persuasive legal arguments to distinguish your brand and trademark from others.
- Avoiding mistakes that could prevent your application from being registered.
- Gathering documents you require so you don’t miss anything.
- Clarifying exactly what you need to provide in your response to the USPTO.
- Communicating with the examining attorney on your behalf.
- Following all response timelines so your application isn’t abandoned.
Where to Find a Lawyer for a Trademark Office Action
If you need to hire a trademark lawyer to help you with a trademark office action, you can easily connect with one on ContractsCounsel, one of the largest online legal marketplaces where all lawyers are vetted. The user-friendly platform streamlines your lawyer search and is much more convenient than having to cold-call traditional law firms.
You can search for a lawyer who’s the best match for your legal requirements according to factors such as their location, previous projects, level of expertise, and years of experience. You can also read their client ratings and reviews.
