Responding to Trademark Office Actions

General Information

The USPTO makes is relatively easy for anyone to file an online trademark application; however, the USPTO makes it just as easy to make a fatal error in filing the application. Additionally, unless you are familiar with the USPTO filing and examination process, the USPTO may likely refuse registration for a variety of reasons. The trick is to know how to navigate the USPTO waters and avoid the potential pitfalls. In most instances, the USPTO does not immediately approve the mark for registration, but instead, issues an “Office Action” listing grounds for refusal. These grounds may include one or more of the following:

• Your proposed mark creates a likelihood of confusion with a prior application or registered mark;
• Your mark is not distinctive. In other words, you mark merely describes your proposed
  goods or services, is primarily merely a surname, geographically descriptive, deceptive or scandalous;
• Your listing of goods and services is indefinite and requires amendment to conform to USPTO practice; or
• Your specimens fail to demonstrate acceptable use of the mark.

All USPTO Office Actions are different because each mark raises unique issues. In most cases, the USPTO Office Action only requires minor amendments, but in other instances, a detailed response may be required.

The USPTO requires that a response to the outstanding Office Action be filed within six (6) months of the date of issuance. If no response is timely filed, the USPTO will abandon your application and any filing fees will not be refunded.

Note – if the USPTO abandons the application, you have two (2) months to file a Petition to Revive the Application and respond to the USPTO refusal (of course, after paying additional USPTO fees.

APPEALS TO THE TRADEMARK TRIAL & APPEAL BOARD (TTAB) – EX PARTE APPEALS

Finally, the USPTO will issue a FINAL Office Action. At such point, the Applicant has one last opportunity to enter evidence into record and prepare a brief attempting to convince the Examining Attorney to withdraw the refusal. Applicant’s have six (6) months to file a Request for Reconsideration prior to responding to the FINAL Office Action and filing a Notice of Appeal to the TTAB. Upon filing the Request for Reconsideration, the TTAB will toll the Appeal and send the case back to the Examining Attorney for reconsideration. If the Examiner rejects the reconsideration, then the Applicant will be given a date (60 day) to file an ex parte appeal. In some cases, a prior registration that was barring registration may cancel due to abandonment which opens the door to the Applicant overcoming the refusal.

HOW TRADEMARKAUTHORITY RESPONDS TO U.S. TRADEMARK OFFICE ACTIONS

When filing any trademark application on our client’s behalf, TrademarkAuthority drafts the application to avoid any of the above USPTO refusals. In the event a client receives an Office Action that requires minor amendments, we will prepare and respond to all informal USPTO Trademark Office Actions on our client’s behalf without any additional costs, unless the USPTO requests additional filing fees or the response requires more than 30 minutes of time. In the event of a substantive refusal, such as your proposed mark creates a likelihood of confusion with a prior mark, we will provide you with a firm estimate on the fees associated with preparing an appropriate response before doing any work.