How to Review Office Action Response

My Trademark Was Rejected: What Do I Do?

After submitting a trademark application, the USPTO may issue an Office Action to pause the process and outline reasons for the decision. However, an Office Action is not a final rejection, and addressing the legal issues raised in the response may allow the application to proceed. To navigate this complex process, it’s essential to work with a trademark lawyer who understands trademark law and has experience filing Office Actions. Trademark applications may be rejected for procedural reasons, such as missing information or errors in the application, or substantive reasons, which require legal arguments to overcome objections from the trademark examiner. Overcoming substantive objections can be challenging and requires expertise in trademark law.

How To Respond To A Trademark Office Action: First Analyze Your Original Trademark Application for Defects

A trademark can be a word, logo, slogan, sound, or motion that distinguishes a good or service from its competitors and helps consumers identify its source. In order to file a trademark application with the United States Patent and Trademark Office (USPTO), the applicant must provide various pieces of information within the application, including:

  • The contact information of the applicant
  • The legal status of the applicant (a person or business entity)
  • The nature of the trademark (is it a word, design, slogan, or sound/motion trademark)
  • The description of the trademark
  • The class of goods/services to which the trademark will be assigned
  • A description of the goods/services
  • A specimen showing use of the goods/services in commerce
  • A statement of first use of the trademark, both generally and in commerce
  • An indication that the application is an Intent-to-Use if the mark has not yet been used in commerce

The application is submitted with the required fee, and the applicant may receive a response from the USPTO within 3-5 months. This response could either confirm acceptance of the trademark or outline reasons for rejection in a Trademark Office Action, which may require corrective measures to be taken.

The trademark examiner reviews the application and makes a determination based on the information provided by the applicant.

Why Did My Trademark Get Rejected?

It’s important to understand that there are real live trademark examiners at the USPTO who review each trademark application. While they strive to maintain consistency in their decisions to accept or reject trademark applications, it’s worth noting that examiners are fallible human beings, and different examiners may come to different conclusions about the same trademark application.

When a trademark examiner determines that an application does not comply with trademark law, they will issue a Trademark Office Action. These Office Actions can be broadly categorized into two types: Procedural Trademark Office Actions and Substantive Trademark Office Actions.

Procedural Trademark Office Actions

Procedural Trademark Office Actions are a type of office action that typically requires minor changes to the trademark application. These changes may involve correcting errors in the applicant’s information, such as misidentifying the type of business entity or disclaiming certain words in the trademark. Such office actions are generally straightforward and do not require major revisions to the application.

Substantive Trademark Office Actions

Substantive Trademark Office Actions are more challenging to overcome compared to Procedural Trademark Office Actions. These actions require the applicant to provide a written response addressing the substantive issues raised by the USPTO trademark examiner, such as:

  • Section 2(d): Likelihood of Confusion Refusal
  • Section 2(e): Descriptiveness Refusal
  • Miscellaneous Trademark Office Actions

Response Deadlines: When You Need to File a Response to the Trademark Office Action

Keep Your Eyes on the Three Months Mark

It is crucial to adhere to the timeline set by the USPTO when responding to a trademark office action, as failure to do so may result in the rejection of your trademark application. Within three months of receiving an office action, applicants must provide a comprehensive response that addresses all legal issues raised by the examiner. This can be particularly challenging for office actions that raise both procedural and substantive issues, so it is recommended to consult with a trademark lawyer to understand the scope of the response needed and the preparation required to draft and submit the response.

However, if the 3-months deadline is missed, an extension of time can be requested from the USPTO, though it will come at an additional cost.

How Much Does it Cost to File a Trademark Office Action?

There is unfortunately no fixed cost for responding to an office action, and the expenses may vary significantly depending on whether the office action is procedural or substantive. Responding to the most complex and time-consuming office actions, such as those based on a likelihood of confusion or descriptiveness rejection, can cost several thousand dollars. On the other hand, the easiest office actions to respond to are those that only necessitate modifying the goods/services or adding a disclaimer.

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