Responding to Office Actions Issued on Trademark Applications

By | August 31, 2011

An office action is a letter from the United States Patent and Trademark Office (USPTO) notifying the applicant of a problem with a trademark application.  In an office action, the U.S. government trademark examining attorney informs you, the applicant, of a specific problem with your application.  The problem could be anything from a technical error with your application to a refusal because of a pre-existing trademark that is too similar to your proposed trademark.

Applicants must respond to an office action within six months from the date the office action is mailed. There are no extensions to the six-month deadline and the examining attorneys have no discretion in the matter.  If an applicant fails to respond within the six-month timeframe, his or her application will be declared abandoned.  Applicants may submit responses to office actions online using an electronic form through Trademark Electronic Application System (TEAS), as well as by facsimile or U.S. mail.

When formulating a response to an office action, an applicant needs to address each issue raised by the examining attorney.  Because some of the issues raised by the examining attorney may be complex legal issues, it is advisable to consult with an attorney in order to respond properly and fully.  Moreover, while it is possible to locate general advice in answering office actions, such advice does not take the individual application into account.  Registration of a trademark is fact-specific and involves legal rights. Trademark registration is therefore not just a fill-in-the-blank form. Again, consulting an attorney will be beneficial to fully understand the legal rights involved, as well as to find case law support for the applicant’s trademark and fact-specific situation.

One common reason for refusal of a trademark is when the proposed trademark conflicts with another previously registered mark.  In responding to such a refusal it is important to explain the facts, present a legal argument, support the legal argument using case law, and convince the examining attorney that there is no likelihood of confusion between the previously registered mark and the mark the applicant is trying to register.  The legal argument and the case law support need to be well-formulated and explained in order to change the examining attorney’s mind.  To make a convincing argument it is important to fully understand the case law and be able to conduct research to find good supporting case law from analogous situations.  Accordingly, any time there is a refusal issued on a trademark application because of a likelihood of confusion with a pre-existing registration, it would be beneficial for the applicant to consult a trademark attorney who is familiar with the law and has the tools and experience to formulate a convincing, well-reasoned, and well-supported legal argument.  Such an argument may be necessary to convince the U.S. government’s examining attorney to change his or her mind and to approve the applicant’s trademark registration.

Josh Gerben is a trademark attorney and the founder of Gerben Law Firm, PLLC.   Located in Washington DC, the Gerben Law Firm provides trademark services globally and assists applicants who must respond to an office action from the USPTO.

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