The process of registering a trademark is more complex than most people realize. First, you must determine whether any marks similar to those you wish to register have already been registered. Second, if any such marks exist, you need to determine whether your mark would be confusingly similar to those marks in your desired market. Finally, if you are confident that your mark application will be approved, you must submit the appropriate forms and materials to the USPTO.
Your submission for trademark registration must include a specimen that demonstrates how you intend to use your mark. You must also identify the filing basis under which you intend to register your mark, and you must ensure that you indicate exactly what type of goods and services you intend to commercialize with your mark. Again, working with an experienced Orange County trademark office actions attorney is the best way to navigate this process with confidence.
Your attorney can perform a more extensive trademark search than you could manage on your own. The USPTO provides an easily accessible online database of registered trademarks that allows applicants to browse the registry of trademarks to check if their desired marks are available. In addition, experienced trademark lawyers have access to alternative databases that can provide more robust results, ensuring that your search is as comprehensive as possible.
Beyond your trademark search, there are many other advantages to having an experienced trademark attorney assist you with your trademark registration. For example, they can help you complete your registration application, ensuring that you have correctly listed the intended use for your mark, chosen the correct filing basis, and provided an accurate trademark specimen for the USPTO to evaluate. Your attorney can also help you with office actions from USPTO examining attorneys.
CAN ANY ATTORNEY FILE A TRADEMARK?
If you want legal advice concerning the trademark registration process, choosing an attorney who has solid experience specifically handling trademark law is best. While many attorneys offer legal representation across multiple practice areas, it is always best to choose an attorney who has experience in the exact type of law that pertains to your case. It’s natural to feel intimidated by the complexity of the trademark registration process and the rules of the USPTO. You can approach your trademark registration process with greater confidence by working with Orange County trademark office actions attorneys like the team at Blake & Ayaz.
DO I NEED A LAWYER TO TRADEMARK A NAME?
Technically, you do not need a lawyer to register a trademark, whether you intend to register a trademark for a name, a logo, a business image, or any other type of mark. However, working with an experienced trademark lawyer will make all trademark-related actions much easier. Your attorney can guide you through every phase of registering a name, logo, or other mark as your trademark. While you may believe that you could save money by handling the process on your own, there are many potential obstacles you could face, and the process can take much longer than you anticipate, but you can address these issues by having an experienced attorney guide you through the process from the first stage.
WHAT IS A TRADEMARK OFFICE ACTION?
When you submit a trademark registration application to the USPTO, an examining attorney employed by the USPTO will be assigned to review your application. An “office action” is when an examining attorney communicates with an applicant during the review process regarding an issue with their desired mark. Essentially, an office action is a formal notice from the USPTO that the examining attorney needs more information to continue the review process.
An office action takes the form of a legal letter from the USPTO examining attorney. They will include a list of legal issues with your application in this letter, which may pertain to problems with your application or potential conflicts surrounding your desired mark itself. If you receive an office action from the USPTO, it is essential to address all listed legal issues before the USPTO will approve and register your trademark.
If you receive an office action letter, you may need to do something as simple as clarifying the type of goods or services you intend to commercialize with your mark. However, some office actions may include refusals, and the examining attorney will cite their justification for refusing your application. For example, if your desired trademark is too similar to an existing mark, they will likely cite the confusing similarity as the reason for their refusal.
If you have a significant issue with your trademark application, you may need to submit a written response to address the issue. However, if the examining attorney has cited a minor issue, you may be able to resolve it with a simple phone call to the examining attorney’s office. Other office actions may not require responses at all.
NONFINAL VS. FINAL OFFICE ACTIONS
There are two general types of trademark office actions: final office actions and nonfinal office actions. A nonfinal office action raises a legal concern about your trademark application for the first time. You have six months to respond to this type of office action. If your response satisfies the examining attorney’s concerns, they may continue processing your application using the responses and new information you provide. If your response raises a new issue, the examining attorney will likely send you another nonfinal office action, and you must address this new office action in a similar fashion to the first. If your response does not satisfy the examining attorney, they will likely issue you a final office action.
As the name implies, a final office action raises a legal issue with your trademark application for the last time. Therefore, you will receive a final office action from a USPTO examining attorney after they have already raised all potentially fixable legal issues with your application. When you receive a final office action, you have one more opportunity to fix the legal issues raised with your application. If you accomplish this, the USPTO will proceed with processing your application through the registration process. If you do not, the USPTO will consider your trademark application abandoned unless you file an appeal with the Trademark Trial and Appeal Board.
OTHER TYPES OF OFFICE ACTIONS
Beyond nonfinal and final office actions, the USPTO may also send you various other office actions, such as:
- Examiner’s Amendments. These office actions are written confirmations of changes to your application that you have authorized over the phone or email. These office actions are functionally just formalities, providing an applicant with a written record of the USPTO making changes to an application approved by the applicant.
- Priority Actions. These are also formalities, providing a trademark applicant with a written record of a discussion with a USPTO examining attorney concerning a legal issue with their registration packet. For example, if a USPTO examining attorney sent you a nonfinal office action regarding a minor legal issue that you then corrected, the USPTO will automatically generate a Priority Action that outlines the problem and the suggested steps for correcting it. Likewise, if a USPTO examining attorney believes that a written response is necessary to make changes to a trademark application discussed with the applicant over the phone, the Priority Action will include the required steps the applicant must complete for submitting their written response.
- Suspension Letters. You will receive this type of office action if the USPTO examining attorney handling your application must put your application on hold for some reason outside of the examination process. For example, the USPTO may need to suspend your application while it waits for the assignment of ownership to finish processing. The USPTO reviews suspended applications every six months, but you can contact the USPTO examining attorney assigned to your case if you have reason to believe a suspension is no longer necessary.
- Notices of Incomplete Response. If you receive this type of office action, it means that a recent response you submitted to your USPTO examining attorney did not fully satisfy their legal concerns or does not include complete information. You will have 30 days to provide an acceptable signed response to this type of office action.
While you might feel disheartened by receiving an office action from the USPTO, and these actions may slow your trademark registration process, receiving an office action does not necessarily mean your trademark will never be approved. Consulting an experienced Orange County trademark office actions attorney is the best way to determine how to respond to these office actions effectively so your trademark application can proceed as intended.
HOW DO I RESPOND TO A TRADEMARK OFFICE ACTION?
There are several methods you can use to respond to a trademark office action. Generally, it is best to consult an Orange County trademark office actions attorney to determine which response method would be best for your situation. In addition, the USPTO offers response options including phone and email as well as the Trademark Electronic Application System (TEAS). Your attorney can help you navigate TEAS and submit your response accordingly.
The USPTO will provide clear instructions for responding to your office action, and the designated person listed in the office action is the only person who may sign off on the response. Your attorney will help you examine the office action and determine the best method of responding. They will also help you address all of the examining attorney’s legal issues as succinctly as possible, so your registration can proceed without further interruptions.
HOW MUCH DOES IT COST TO SUE FOR TRADEMARK INFRINGEMENT?
If you have dealt with a protracted dispute with the USPTO involving office actions and have finally registered your desired trademark, it can be incredibly frustrating to encounter any trademark infringement. If another party is attempting to capitalize on your registered trademark’s reputation without your approval, this is infringement and grounds for legal action. The attorneys at Blake & Ayaz can assist you in addressing any trademark infringement, and there are many methods we can use to do so. When it comes to the cost of suing another party for trademark infringement, this generally depends on the amount of time your legal team must commit to handling your infringement case.
Handling trademark infringement usually begins with the trademark owner sending a Cease-and-Desist letter to the infringing party demanding they stop all trademark use in question. If they do not listen to this letter, the trademark owner can proceed with a lawsuit and potentially recover compensation for lost profits, damage to their trademark’s reputation, and other losses.
If you are registering a trademark and would like professional assistance with the process, or if you have already filed a trademark registration application and have received an office action from the USPTO, the attorneys at Blake & Ayaz can help you. Our team has extensive experience helping clients navigate the most complicated trademark disputes, and we can put this experience to work for you. To discuss your concerns with an experienced and reliable Orange County trademark office action attorney, contact Blake & Ayaz to schedule a consultation.