Court

Trademark Office Actions

What is an 'Office Action'?

An Office Action "OA" is a notice of objection to some technical substantive or non-substantive issue with your trademark application that keeps it from being registered. The trademark examiner can issue one for a variety of reasons, some more involved than others and each requiring its' own specific response. Typical OA objection's include: 

  • Improper identification of goods and services

  • Unacceptable specimen of use

  • Mere descriptiveness

  • Surname refusal

  • Disclaimer of some part of the mark

  • Likelihood of confusion

In any event, and no matter what the basis for refusal, each type requires its own assessment of the refusal, a consideration of the best way to respond to the notice (written, email or telephone) and a proper response aimed at overcoming the reason for the Office Action.

Types of Office Actions

There are two (2) types of OA's; non-final and final. All non-final OA's require you to file a response to the OA, or your application will be deemed abandoned. If the examining attorney accepts your response as sufficient, the objection will be withdrawn and the registration procedure will continue on as usual.

A final OA is the last chance you will get to convince the examiner that your mark's application should be approved. If you receive such an OA, you have two options. The first is filing a Request for Reconsideration with the examiner. The second option is to appeal the examiner's final ruling to the Trademark Trial and Appeal Board for a determination of registrability.

Why Should I Respond to an OA?

Failure to respond to an Office Action can have negative consequences if not done in a timely manner. As of December 01, 2022, most non-Madrid Protocol OA's must be responded to within three (3) months of the date of the letter. If not, the application will be deemed to be abandoned. This three month term may be extended one additional period of three months, with the payment of a $125 extension fee. Applications filed under the Madrid Protocol will still have six (6) months to respond to such actions.

If you have received an Office Action, time is of the essence, and you should contact a knowledgeable attorney that can best respond to the objection brought about by the examiner. I can help assess the basis for the objection, formulate a proper response and/or suggestion that might sway the examiner to accept the application as is, or with minor changes to the existing mark. For more personal information or for a more full assessment of your situation, feel free to book an office action consultation here. Intellequity is Portland's personal small business and trademark attorney!