Trademark Applications - What Is an Office Action?

What Is an Office Action?

In Trademarks by Stacey Kalamaras

If you recently filed a trademark application with the USPTO in the past four months, you may have received an Office Action in response to your application.  What is an Office Action?  In its simplest form, an Office Action is a letter from the USPTO addressing any and all informalities with the application.  These can range from very simple procedural issues that have to be corrected before your application can be approved, to the most serious substantive refusals of registration that may prevent your application from ever maturing to registration.  If you have received an Office Action, your application cannot proceed until each and every problem addressed in the Office Action is resolved to the satisfaction of the Examiner.

Hopefully, you did not file the trademark application by yourself and your trademark attorney will provide you with her recommendations of how best to address the Examiner’s concerns.  However, if you did file the application by yourself (which is ill advised, as filing a trademark application is the start of a legal proceeding and the words you use in the application matter and may affect your legal rights), do not despair!  You can still hire a competent trademark attorney to assist you once the Office Action issues.

Responding to an Office Action is a lot like filing a legal brief in court.  Depending on the issues raised in your Office Action, the issues need to be researched, briefed and fully argued in order to successfully overcome the refusals of registration and get your application approved for publication.  Always ask for an estimate before you hire someone; but this is not the time to price shop. You want to be sure the person you choose has extensive experience practicing before the USPTO and is competent to handle your particular objections.  There may be more than one strategy to explore to help you get your application approved.  And while no one can guarantee success, as the USPTO is very inconsistent, you want to hire someone with significant trademark experience with your issues.  There is a significant amount of time and resources that go into responding appropriately, so merely asking “how much do you charge?” is unfair to both to you and the attorney you are asking.

There are also ways to avoid receiving substantive Office Actions and reduce the amount of money spent in securing your registration.  By working with your trademark attorney at the beginning of the process to conduct a full trademark availability search (see our blog post here), she can advise you of any potential issues that may arise during the trademark examination process and advise you of the risk involved in choosing that mark.  An Office Action may still issue that addresses ministerial issues, but these are quite simple and inexpensive to respond to.  By spending a bit more money at the beginning of the process, it can save a lot of time and effort later in the process.  Many pro se applicants end up abandoning their applications once they receive substantive refusals (especially likelihood of confusion and descriptiveness refusals) because they are intimidated and overwhelmed by the process. While these can be challenging to overcome, if your trademark is important to your business, you owe it to yourself to fight for your trademark.  The Examiners are just doing their job – allow your trademark attorney to do hers!

If you or someone you know has received an Office Action and needs assistance preparing a response, please contact us for a complimentary consultation or quote.  We would be happy to assist you.