What is an office action?

Filing a trademark application is not always a smooth ride. Submitting a winning trademark application requires selecting the proper language, description of your services/products, compliance with procedural requirements of the application and avoidance of selecting a mark that could produce confusion within the marketplace, among other things. While these essentials of a well drafted trademark application are easy to list, they tend to be more difficult to effectuate in practice and are often overlooked. Let's briefly discuss office actions, what they are, why applicants receive them, and what it means for your trademark application. 

What is it and why did I receive one?

An office action is correspondence from an examining attorney working for the United States Patent & Trademark Office (USPTO) and is used to notify a trademark applicant that there is an issue with his or her trademark application. They tend to look something like this, but can vary based on the issues highlighted by the examining attorney. After filing your trademark application, an examining attorney will conduct a detailed review of your application and determine the registrability of the mark, whether the application complies with Trademark Act and Office Rules, and whether the application meets the necessary procedural requirements. If the examining attorney believes that the application falls short of these requirements, an office action letter will be issued to the applicant. 

What If I don't Understand the Office Action?

When you have received an office action it is critical that you read it in full, and if you do not understand what the office action is telling you, you can reach out to the examining attorney directly. Their information will be listed somewhere near the bottom of the office action letter. Be advised, however, that the examining attorney can not give you advice about your application. They can only explain why you received the office action and what it means substantively and procedurally for your application.

What do I do Next?

If you want your trademark to eventually register you must respond to the office action and address every issue highlighted by the examining attorney. The USPTO provides a 6 month period to respond to an office action. If an applicant fails to submit a full and complete response within the allotted 6 month period, the application will be abandoned

How Do I Respond?

The type of response required varies according to the type of office action. Certain office actions will only address procedural errors, or request nominal amendments to your application while others will require a finessed legal response and some heavy lifting. Consulting with an experienced trademark attorney can save you a headache and ensure the hundreds of dollars in application fees are not wasted 

Have you received an office action letter? Let us help you get your trademark application back on track. All of our office action response pricing is flat fee, so there are never any surprises. 

Hawkins Law Offices, LLC is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, please do not hesitate to contact us.

Derek Hawkins

Hawkins Law Offices, LLC, 757 North Water Street, Suite 300, Milwaukee, WI 53202