The trademark application process can be complex, and one common hurdle businesses face is receiving an Office Action from the United States Patent and Trademark Office (USPTO). If you and your attorney recently applied for a trademark, you may receive a communication from a trademark examining attorney at the USPTO known as an “Office Action.” While these can initially seem daunting, they are a normal part of the process. In this blog post, we’ll explain what an Office Action is, the types of Office Actions you may receive, and how to respond effectively.
What Is an Office Action?
An Office Action is an official letter sent by a trademark examining attorney at the USPTO. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. The letter typically outlines any issues or problems the attorney has found with your application. These issues must be resolved before your trademark can proceed to registration. The examining attorney may raise concerns about technical, legal, or substantive issues that must be addressed.
In an office action, an examining attorney may require that you fix legal problems with the application itself (“requirements”) by making simple revisions, such as clarifying your goods or services. An examining attorney may also raise legal rejections (“refusals”), such as refusing your application because your chosen trademark will likely be confused with an already registered trademark. However, you may not always be able to fix a requirement or a refusal.
Some office actions require a written response to fix major legal problems, others suggest calling or emailing the examining attorney to fix minor legal issues, and others may require no response. It’s essential to read your Office Action carefully to determine how and whether you need to respond.
Types of Office Actions
Office Actions can be classified into two main types:
- Non-Substantive (Administrative) Office Actions
- Substantive Office Actions
1. Non-Substantive (Administrative) Office Actions
A non-substantive Office Action usually relates to administrative inconsistencies or missing information in your application. These issues are generally easier to resolve, and the Office Action will specify what changes or additional documentation is required. Some common reasons for non-substantive Office Actions include:
- Specimen Issues: If the specimen (evidence showing how you use the trademark in commerce) is insufficient or does not meet USPTO guidelines, you’ll be asked to submit a new one.
- Improper Classification: If your trademark is specified under the wrong class of goods or services, the examining attorney may request that you reclassify it properly.
- Missing Information: If your application needs specific details that the USPTO requests and did not receive in the first round, such as a description of your goods or services, you must submit that information.
These issues are generally administrative, and once corrected, your application can move forward without much delay.
2. Substantive Office Actions
A substantive Office Action, on the other hand, addresses legal issues concerning the eligibility of your trademark for registration. These are more complex and often require legal analysis or changes to the application to resolve. Substantive issues can include:
- Likelihood of Confusion: The USPTO checks for conflicting marks during the examination process after a trademark application is filed. They compare your mark with existing registrations or pending applications, focusing on the similarity of the marks and the commercial relationship between the goods or services. Even if the marks or products aren’t identical, similarities in sound, pronunciation, appearance, or meaning could lead to confusion. If there’s a conflict, the USPTO will refuse registration.
- Descriptiveness or Genericness: A mark is refused as geographically descriptive if it primarily represents a known location, consumers believe the goods or services come from that place, and the mark accurately reflects the origin. It’s deemed geographically deceptively misdescriptive if it represents a known location; consumers are misled to believe the goods/services come from there, but they don’t, and this misrepresentation impacts buying decisions. For example, If a brand of coffee is named “Colombian Brew,” but the coffee beans are not from Colombia, this could be rejected as geographically deceptively misdescriptive.
- Failure to Function as a Trademark: A mark will be refused if it does not function as a trademark, meaning it doesn’t serve to identify the source of goods or services and distinguish them from others. Common reasons for this refusal include merely informational marks, slogans that are seen as common phrases, or designs that consumers wouldn’t associate with a specific brand.
- Deceptiveness or Scandalous Matter: A trademark can be refused registration if it is deceptive or contains scandalous matter. A mark is considered deceptive if it misleads consumers about the goods or services’ nature, quality, or origin. A mark is considered scandalous if it contains offensive, shocking, or immoral language or imagery that violates public standards of decency.
These objections require a more thoughtful and often legal response, such as arguments, evidence, or amendments that can overcome the examiner’s concerns.
Responding to an Office Action
The key to successfully responding to an Office Action is to carefully review the issues the examining attorney raised and address each in detail. Here’s a general outline of how to approach your response:
- Understand the Deadline: You typically have three months from the date the Office Action is issued, and an optional three-month extension can be requested for a fee. Failing to respond within this timeframe will result in the abandonment of your application.
- Consult an Attorney: For Office Actions, make sure to consult with your attorney. A skilled attorney can help craft persuasive arguments or propose amendments to increase your chances of success.
- Provide a Complete and Thorough Response: Your response should address each issue the examining attorney raises. No problems can be skipped. If more information is requested, supply it. If the attorney believes your mark will likely be confused with another, you may need to provide evidence or arguments to demonstrate why it is not.
- Submit Your Response Through the USPTO’s Trademark Electronic Application System (TEAS): All responses to Office Actions must be submitted online via TEAS. Ensure that your response is complete before submission to avoid unnecessary delays.
After Submitting a Response
Once your response to the Office Action is submitted, the examining attorney will review it and determine whether the issues have been satisfactorily resolved. If so, your application will move forward in the registration process. You may receive another Office Action or a final refusal if the issues are unresolved. In the case of a final refusal, you may have the option to appeal the decision.
Conclusion
Receiving an Office Action is a standard part of the trademark application process. While it may seem like a setback, it’s an opportunity to ensure that your trademark meets all legal requirements and is best positioned to succeed. Whether the Office Action is non-substantive or substantive, understanding how to respond effectively is critical to moving your application forward.