A trademark office action response requires you to pay special attention to issues or provide additional information to finish processing your application to register a trademark with the United States Patent and Trademark Office.

Responding to a Trademark Office Action

Once an application for trademark registration has been submitted to the United States Patent and Trademark Office, or USPTO for short, it will then be submitted for review by an attorney who specializes in examining these documents. If there is an issue with an application or more information is needed, the attorney who has been assigned to examine your application will notify you by sending an official letter that is known as a trademark office action. This letter is intended to let you know an issue exists with your application that requires your attention.

Until you have provided the appropriate response to this action, processing of your application will not continue. In simple terms, trademark office actions are letters that are sent out by attorneys that have been assigned to examine an application for trademark registration to inform you regarding the status of your application. There are two categories that a trademark office action might fall into:

  • Non-final office actions are intended to serve as the first notification regarding an issue with your application.
  • Final office actions are sent if you responded to a previous office action, but your response didn't properly address the identified issues in the original action.

There are also two general types of responses to a trademark office action:

  • Compliance with the requirements that are outlined in the letter you have received
  • Submitting an appeal to the Trademark Trial and Appeal Board

Reasons You Might Receive a Trademark Office Action

Applications for trademark registration might contain things such as grammatical problems or other technical issues that can cause descriptions contained within the application to be somewhat unclear in nature. For instance, your application might include inadequate samples pertaining to how you plan to use your trademark once it has been registered. The attorney assigned to examine your application might believe that your trademark is likely to create confusion with another trademark that has been previously registered with the office or a trademark that is already in the application process.

Another example includes trying to trademark something such as descriptive or generic item names that can't be trademarked.

Filing a Trademark Office Action Response

When you respond to a trademark office action, your response needs to specifically address the issues that have been identified to the satisfaction of the attorney who sent you the letter. If it doesn't, it's possible for your application to be denied. For this reason, and because of the fact that the identified issues might be hard to properly address, it's a good idea to get help from an attorney who specializes in trademark registration if you ever find yourself needing to respond to a trademark office action.

Most of the time, the United States Patent and Trademark Office requires responses are received within six months of the date the trademark office action was mailed unless a different deadline has been specifically stated in the letter you receive. There are a couple of important details to understand regarding this deadline:

  • It can't be extended.
  • If you miss it, your application for trademark registration will be considered to have been abandoned.

The United States Patent and Trademark Office prefers receiving a trademark office action response via the Trademark Electronic Application System or TEAS. However, if you need to, you can submit your response by sending it through the mail or faxing it to the office.

It is important to use the right form and to completely address every issue that was identified in the letter you received from the USPTO's attorney when responding to a trademark office action. If you don't fully address these issues, the attorney might declare your application for trademark registration as abandoned. For this reason, it can be a good idea to get help from an attorney with knowledge and experience pertaining to trademark office action response to make sure that your reaction meets all requirements.

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