What is an Office Action?

Filing a trademark is a subjective process monitored by the USPTO. If the US Government has any concern with your application or thinks that it may infringe on another person’s mark, they will issue a notice called an Office Action. A response to an Office Action is required to fix your trademark application.

Receiving an Office Action does not necessarily mean that your trademark application has been rejected.

There are many reasons the USPTO may issue an Office Action during your application process. The most common office action issued is when the USPTO believes there is a likelihood of confusion between your mark and another pre-existing trademark. A likelihood of confusion occurs when two marks are similar in look, feel or sound and are used in connection with the same class of goods or services.

Another common Office Action is if the USPTO believes your mark is descriptive or generic. The USPTO will not allow you to claim protection of a trademark that is a commonly used word, term or phrase.

Some office actions may represent a denial or suspension to your application, while others may require a small change or additional information to the current application on file. If you do not respond to an Office Action within a three-month period, your application will be abandoned and all of your rights in the marks and filing fees will not be recoverable.

When responding to an office action, you must address each of the examiner’s objections outlined in the Office Action letter received. If you receive a final office action, the only  way to respond is to comply with the requirements or to file an appeal with the trademark trial and appeal board.

We are happy to assist with responding to your Office Action. Since each Office Action is different, we will first need to review the Office Action before sending a flat fee quote for completing the filing. A response to Office Action does not guarantee registration of your trademark.