How To Respond To A Trademark Office Action?

Securing the trademark rights for your brand is crucial for establishing and protecting your intellectual property from potential infringers. As much as this is necessary, the whole registration process is no less cumbersome. Many times, when you file a trademark application it goes into pending status because of trademark office action.

It is important to know how to respond to an office action as this can significantly impact the successful approval of your application. In this blog, we will discuss trademark office action and what are the effective tips and strategies for filing an extensive response. 

What is Trademark Office Action?

This is an official communication issued by the trademark examiner – also known as the trademark examining attorney – sitting in the United States Patent and Trademark Office (USPTO). The letter from the examiner essentially highlights the issues within your trademark application to which you have to file a response within the stipulated response period. 

What Issues Are Raised in the Office Action?

Before getting into the method of filing a response, it is imperative to understand the issues raised in the USPTO office action. In this way, you will have an idea of what to write in your response form. These include: 

1. Substantive Issues:

At times, an office action comprises of refusal of the trademark application. The common reason for refusing your registration could be 

• ‘likelihood of confusion’ i.e. your trademark might be similar or identical to an existing trademark or a prior-filed application. 
• The mark is descriptive or generic.
• There is a lack of distinctiveness.
• The selected classification for your goods or services is incorrect.

2. Procedural Issues:

If the trademark application contains procedural issues then the application isn’t refused, rather the USPTO examiner requests further information from the applicant. 

Procedural issues that can arise include: 

• inaccurate or incomplete information in the application
• failing to respond within the set deadline
• insufficient specimens or evidence of the mark

Drafting Your Response

Filing for a response to an office action is, in a manner, a chance for you to redeem your trademark application, and so it should be handled with care. Here are important things you need to keep in view when responding to office actions:

 1. Addressing the Issues Raised 

You need to directly address the issues raised in the action. If the objections are related to, for instance, the likelihood of confusion with existing trademarks, you need to present a solid argument which would counter the objection. You can present a detailed analysis of the mark, stating how it orally, phonetically, and visually sounds different from all the other marks.

You can also bring attention to the appearance of the mark as well as the association made by the consumers. By presenting arguments and evidence which inform of how your mark is different from other trademarks, you will be able to secure the position of your application. 

2.  Providing Additional Information

As stated above, at times the examiner would request additional information if the one provided in the application is sufficient. This is a chance for you to clarify any doubts present in the examiner’s mind and solidify your application. You need to ensure that you have drafted a comprehensive response which has addressed all the requests of the examiner, as well as provide any supporting evidence for your claims. 

3. Amendments 

At times, making amendments to your application is better to overcome the objections raised by the office. You need to ensure that changes have been thoroughly reviewed and the requirements of the action have been met.

4. Tackling the Technical Issues

Technical issues pertain to the formalities of your trademark application. See that you have addressed all the technical issues of your application when you respond to the office action. These errors could be in the mailing address, the class of goods or services, or the details of the applicant. 

Response Deadline for the Office Action

In trademark office actions, requesting an extension of time is not possible. The stipulated deadline for response to an office action is six months from the date of the office action issued, and you must file a response within this period. Hence, it is important to keep notice of your deadlines as not doing so would mean that your application will be abandoned. 

Responding To Final Office Action

Say, the USPTO examiner attorney does not find your justifications to be reasonable in the non-final office action then they will issue a final office action. As the name suggests, the action is sent if the issues were not sufficiently and adequately addressed in the non-final action. Usually, the action is raised for substantive issues such as ‘likelihood of confusion’ or ‘descriptive mark’. Hence, the right way to respond to a final action is to come up with different arguments rather than reiterating the previous ones, so that the action is addressed effectively. 

Request for Reconsideration

While making the response, one of the options you have filing a request for reconsideration with the USPTO. In this, you can raise any new issues and bring new evidence in favour of your trademark application. Another option is that you can appeal to the Trademark Trial and Appeal Board (TTAB).

Notice of Appeal

In a situation where the USPTO examiner’s response to your request is not in your favour, then the next step would be to file a notice of appeal with the TTAB within six months from the date of the final office action. In your appeal, you can bring all the additional arguments and evidence you raised in your request to support your case before the Board.  

Conclusion

Responding to a trademark office action requires a mix of legal knowledge, effective strategy, and transparent communication. By having a complete understanding of the issues raised in the action, you will be able to handle the process of your application in an effective manner. Trademark application is pivotal in securing your intellectual property from infringement in the market, and for this, you need to be aware of all the challenges that could come in your way and potentially hinder your process. 

The best way to handle office actions is by hiring a trademark attorney who specializes in the field of trademarks. At Drishti Law, you can book a free consultation today with our experienced principal attorney who can assist you in your trademark registration from the stage of filing the application to getting it approved.