What to Do When you Get a Trademark Office Action

What to Do When you Get a Trademark Office Action

When an examining attorney is reviewing a trademark application at the U.S. Patent and Trademark Office (USPTO), they must determine whether or not a trademark application should be moving forward. The examination process is as much an art as it is a science. But, let’s assume that the trademark examining attorney needs to get something either clarified or they see red flags on an application. To initiate this process of extra review, they issue what is called a “non-final office action.”

A non-final office action does not mean that your trademark registration has been denied (at least not yet). What it does mean is that the trademark examining attorney has questions and they need to be clarified. A non-final office action has a six-month deadline. If you do not respond within six months, your application is marked as abandoned and you would be required to start the process all over again.

So what kind of things is an office action going to address? The most worrisome office action refers to “an initial refusal to register.” Usually the refusal is based on a “likelihood of confusion.” This is a trademark term which means that your trademark is confusingly similar to another registered trademark, and therefore will not proceed with registration. It sounds pretty simple, it sounds like it is something that would outright deny a registration, but it is not that simple.

An office action with an initial refusal to register is actually an invitation to make an argument.

You can argue with the examining attorney and create a record for potential appeal of the examining attorney’s determination. You submit a brief with an argument in response, evidence if you have it, and documents that support your point of view. Then the examining attorney is required to consider all of that information.

The Examining Attorney then has three options:

  1. Ask for more information through another non-final office action or through informal communications with you or your attorney;
  2. Accept the argument and move the application to the next step in the registration process; or
  3. Deny the application and issue a final refusal. After a final refusal, an applicant can appeal the decision to the Trademark Trial and Appeal Board.

When there is an initial refusal for likelihood of confusion, the Examining Attorney will cite perhaps one or more other trademarks that you could be conflicting with. Then, you have the opportunity to look at those trademarks, see what the registrations are, and then build your argument in favor of your registration.

An office action can also address other concerns with your trademark. You could have to clarify some information within your application. Maybe the examining attorney needs a little more specificity in your description of goods and services, or maybe they need to clarify the language in the description of your trademark. Perhaps they need to have something disclaimed, which is common if a word is very generic. For example, I had a client who was attempting to register a trademark that used the word dental. Dental is a pretty common word so we were asked to disclaim exclusive use of the word. These types of concerns are minor and can usually be resolved quickly. Your lawyer will address these issues by speaking with the examining attorney, or in a formal response document.

A non-final office action does not mean you are shut out of the registration process. In fact, while the non-final office action correspondence is ongoing, your trademark application is only put on hold. It does not lose its priority. If someone comes in after you with a similar application, yours is first in line. If you are able to get registered, then that person has to deal with the fact that they have a confusingly similar mark.

Trademark clients may panic when we get this office action, but the non-final office action is often something that can be addressed. It is just a question of whether you want to address it. There might be some expenses involved, and there is some uncertainty involved. So, it is something to be considered.

We will help you figure out what your best course of action is. In the meantime, if you get an office action, consult an attorney. I know many people will try to get their trademarks with a service such as LegalZoom or do it themselves. That is your choice, but when you get a non-final office action, it is best to consult an attorney so you can understand what your rights are, and how to make an argument in favor of your registration.