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How do You Respond to an Office Action?

F. Michael Ayaz

Trademark applications are an important but daunting legal task meant to safeguard your intellectual property and maximize your ability to monetize without fear of being ripped off. When you consider what is at stake, it’s no wonder the process is long, filled with detailed reviews and possible pitfalls that can derail an application.

When the United States Patent and Trademark Office (USPTO) discovers a mistake or missing information in an application, the response issued to an applicant is called an office action. Once an office action is issued, the application will not proceed until the office action is resolved. The pause can feel devastating as it adds time to an already arduously long process.

Instead of allowing your action to fall into a state of paralysis, work with expert Orange County trademark attorneys who can help quickly get your application back on track.

Types of Office Actions You Will Likely Face

Office actions come in two varieties:

  • A non-final office action is when the USPTO reaches out for the first time about an issue.
  • A final office action is issued if the response to the non-final office action didn’t rectify the problem.

The options upon receiving a final office action are to either comply or file an appeal with the Trademark Trial and Appeal Board.

Reasons an Office Action May Be Issued

The examination of your trademark application can uncover several issues which result in office actions and require remedies to proceed, including:

  • Poor writing and technical or grammatical issues that make the application’s purpose unclear.
  • Failure to provide adequate samples of how the trademark will be used.
  • If the examining attorney determines there is already an existing mark on file or an application filed sooner than yours that is similar enough to cause confusion.
  • An attempt to trademark something too generic or commonly descriptive, or a geographic name.

Once an office action is issued, it’s important to promptly assess the shortcomings presented regarding your application and be expeditious in responding.

Responding to an Office Action

Unlike other stages of the trademark application process, there are no extensions for replying to office actions. The deadline to file a response is usually six months from when the official letter was mailed unless an alternate deadline is listed in the letter. The deadline in the letter can be less than six months. The response must be received by the USPTO prior to the deadline.

Responses can be sent via fax or mail if desired, but the fastest method and most secure for ensuring receipt is through the Trademark Electronic Application System. If your response is not received by the deadline, the application is declared abandoned, and the application fee is forfeited without a refund.

The detail involved in an office action response can vary widely depending on what issues the reviewing attorney cited. Unclear language or a poor presentation of the mark may be an easy fix for you as the applicant. Concerns of a conflict with an existing mark will require a more thorough legal response. A trademark attorney becomes a more important resource as the details of the office action become more complex to combat.

You do have the option to contact the examining attorney if you feel their issues with the application are unclear. However, clarity is all you can reasonably expect. They are not your legal counsel and will not be offering pro bono advice on how to fix the cause of the office action. Using an experienced Orange County trademark attorney can lead to swifter resolutions when seeking explanations and providing solutions that will get your application beyond the examining attorney and onto the next phase of review.

Be Proactive to Avoid Office Actions

The easiest way to avoid the complexities of responding to an office action is to avoid being issued one. A thorough assessment of your application prior to submission is important. The USPTO maintains online searchable trademark registries. It has never been easier than it is today to research existing trademarks from the comfort of your home or office.

Hiring legal counsel experienced in the trademark field can help identify potential snags for your application as well. One mistake many first-time trademark applicants make is thinking they don’t need an attorney until there has been an office action or an opposition to their application. Hiring the correct Orange County trademark attorney can help prevent your application from reaching that stage while also being prepared to assist in the response should an action come.

Other Forms of Office Action

Here are a few other forms of office action you may encounter beyond the standard non-final or final actions.

  • Examiners Amendments are written confirmations that changes discussed by phone or via email have been authorized and completed. Functionally, they serve as a receipt of requested changes being requested and made.
  • Notices of Incomplete Response can be issued by the examining attorney if they are granting an applicant a chance to provide a more thorough response to satisfy a matter. These office actions have a relatively short 30-day window for the applicant to submit their response.
  • Suspension Letters are issued when an application must be put on hold outside the examination process. Suspended applications are reviewed every six months to determine if they can be completed.

There are many types of office actions you can encounter, and knowing the appropriate methods of responding can help you deal with these issues the right way.

Let Us Help With Your Office Action Response

All office actions will provide a description of the action, requirements for response and the appropriate USPTO contact for your action. It’s important not to let the frustration of a trademark application delay be compounded by further mistakes.

Your trademark application is too important to let it be paralyzed by a slow response to an office action. Trust the experienced and professional trademark attorneys at Blake & Ayaz to see you through the process of getting the application moving again. With more than 60 years of combined experience in this highly specialized area of law, you can trust us with everything from pre-application research to office action or opposition response. Contact us today for a free consultation on your trademark application.

We’re Ready To Go To Work For You!