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What should I do if I receive an Office Action?

What is an Office Action in Trademarks?

Trademark registration allows companies to use their product or brand without any legal consequences. It makes their product, design, logo or company name more famous and profitable. The United States Patent and Trademark Office [USPTO] is the sole agency that grants the certificate of registration of a trademark. Usually, it takes several months to grant the certificate of registration of a trademark as there are several criteria to be successful in registering the trademark after submitting an application to the USPTO.

Sometimes, it is possible that the USPTO may refuse to grant a trademark for a number of reasons. The term “Office Action” means an official letter issued by the USTPO’s examining trademark attorney while examining the application for trademark registration application of an individual or a company. It can be issued by the USPTO to seek clarification or can be issued as a refusal of the applicant’s mark because it is similar to another trademark within a related class of goods or services. This is known as a likelihood of confusion refusal. For example, if I apply for the mark as “Microsoft,” for software products, the USPTO will reject my application because there is already a trademark name under it in a related class. On the other hand, if I submit an application before the USPTO for registering my trademark as “legends,” in the same class, the USPTO may grant the certificate of registration of the trademark because it doesn’t create a likelihood of confusion.  There can be many other reasons for an office action. 

Why did I receive an Office Action for my application?

The examining attorney of the USPTO has a duty to issue a letter called “Office Action” if the trademark application has some legal shortcomings. The following are the reasons for which an examining attorney refuses to grant the registration certificate of a trademark:

  • The trademark creates a likelihood of confusion.
  • The trademark has no clear disclaimers and the term is too generic in nature.
  • The trademark does not have any secondary meaning – considered “Descriptive.
  • The trade dress has the same design elements as the other similar product.
  • The shape of the product is the same as already existing in the market (trade dress).
  • The applicant is subject to a prior appropriated application already registered with the Supplemental or Principal Register.
  • The trademark is ornamental rather than for the purpose of commercial usage.
  • The trademark contains “geographical descriptiveness”.
  • The trademark specimen does not show the mark is used in commerce.

How can I respond to an Office Action?

First, ensure that the trademark is unique and is not similar to other marks by conducting a comprehensive trademark search by an experienced attorney. This will help avoid the likelihood of confusion office action (2(d) refusal).  A proper search prior to applying will save you time and money down the line by reducing the risk of a 2(d) refusal. 

Office Action from the USPTO is a barrier to the successful registration of the trademark. One needs to take adequate caution while responding to the issue which has been issued by an examining attorney. A second refusal to grant the registration of the trademark may initiate the Final Action which may lead to complete refusal. You are required to take the following steps for a positive outcome and to prevent any further refusal while responding to the Office Action:

  • Read the Office Action document and understand the trademark examiner’s comments, requests, or refusal.
  • Get the help of an experienced Trademark Attorney to avoid any further rejections.
  • Identify the main issues and subsequent issues specified in the Office Action document.
  • Respond through the Trademark Electronic Application System (TEAS).
  • Provide a written statement by addressing every issue highlighted by the Examining Attorney from the USPTO.
  • If the registration of the trademark is again rejected, then go for an appeal before the Court.

Conclusion

Office Action is a document provided by the trademark examiner after the examination of the applicant’s mark in the class of goods or services. You will need to rectify the problems stated in the trademark office action to provide a “notice of allowance.” Only an effective response to an Office Action can lead to successful registration.

Let Karana IP get you from application ™ to registration ®.

If you have a new brand to protect, Karana IP has the ability to help you choose, protect, and enforce trademarks under state and federal law. Contact Karana IP Law, LLC, today if you have questions about the selection, registration, protection, or enforcement of your mark.
If you would like to begin the trademark registration process, please submit a trademark intake form and Karana IP will contact you within 24 hours.

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