The application process for a trademark can be daunting and confusing for many first-time applicants, especially when it involves unfamiliar legal language. Small business owners can feel overwhelmed and unsure about the meaning and purpose of “non-substantive office actions”.
In this blog post, we will try to give you a simple explanation of what constitutes non-substantive office actions by the United States Patent and Trademark Office (USPTO). Whether you are someone who wants to become a small business owner or are already one, understanding the trademark registration process and how to protect your brand is important.
As you proceed through the trademark registration process, you will undoubtedly see the term “non-substantive office action”. Do not get alarmed. In this blog post, we will unpack what it means and how it might impact your trademark application.
What Are Non-Substantive Office Actions?
An office action is issued by the USPTO examiner assigned to your trademark application as a preliminary refusal. office actions fall into either substantive or non-substantive categories. It is estimated that around 60% of trademark applications will receive an office action.
Given this high percentage, it is better to prepare for an office action by retaining a trademark attorney when you file a trademark application, so if the office action does issue, you will be prepared to respond promptly.
A non-substantive office action is a letter issued by the USPTO to resolve minor issues or administrative issues before your application can proceed. While non-substantive issues may be small, it is important to understand that an office action is still important even if it is a preliminary refusal, and failure to respond will render your application ‘abandoned’.
You only have three months from the date of the office action to file a response. The deadline to respond is very strict, such that if you file your response one day late, your application will lapse. There is one possible three-month extension, which must be timely requested, but this requires a government fee.
Hence, it is important to properly and quickly respond to non-substantive office actions to keep your registration moving forward. You can do this by hiring an experienced trademark attorney who will swiftly and meticulously handle all of your office actions.
Types of Non-Substantive Office Actions
One regularly seen type of non-substantive office action is the explanatory office action. These are sent by a USPTO examiner to simply ask for clarification or more information on certain aspects of your trademark application.
The purpose of this is to confirm that the application might be complete, accurate and follow procedural steps. It is not a refusal of your mark but an invitation to resolve the issues raised by the examiner so that your application keeps moving.
Another type of office action includes formality requirements, which are typically easy to settle; they may involve minor corrections, providing missing details, or providing documents that may be omitted.
Although the changes may appear insignificant, it is important to respond quickly and completely because if an application is incomplete or there is a delay in response, the entire registration proceeding could suffer a setback.
To respond effectively to a request, it can be helpful to review the USPTO’s Trademark Manual of Examining Procedure (TMEP) to explore precisely what the examiner is requesting and responses that are acceptable. If the requested information is supplied quickly and accurately, it would minimise any unnecessary lag time and improve the chances of a successful trademark application approval.
Responding to the Office Action
First rule: don’t wait. You only have three months, and that three-month countdown starts to run the second the USPTO issues the office action. During those three months, your application is effectively “frozen”, which means that no progress will be made by the USPTO until a complete response is filed. If you wait until the last minute, while simultaneously looking for an attorney, you create unnecessary pressure and likely risk missing the deadline.
A smarter option is to hire a trademark attorney before any office action. If a professional is monitoring your application, you can confidently respond to the office action immediately.
Many trademark attorneys offer flat-fee packages that include responses to non-substantive office actions, so you should not be surprised when your attorney responds to your office action. At Drishti Law, our principal trademark attorney has considerable experience in tackling complex office actions and has resolved them for numerous clients. You can seek out his services if you are looking for an affordable but efficient option.
When you respond to an office action, make sure that you exhaustively address every issue raised in the office action. Even a small missed duty can lead to delays in the application process. This is where having someone experienced on your side is extremely helpful – after all, they already know what the USPTO examiner is looking for, they will make sure nothing is overlooked, and they will help keep your application moving towards a final approval.
Since this type of office action concerns a procedural or clerical issue, rather than questioning the legal merit of your trademark, the issues are usually relatively simple to fix. You need to watch out for the following issues:
- Missing information: The USPTO may ask for more information on your business or about the goods and services you provide.
- Incorrect format: You may need to make changes to meet the USPTO’s format requirements.
- Minor discrepancies: You may need to clarify details like the date of first use or what class the goods belong to.
In most cases with non-substantive office actions, you will comply simply by providing the requested information, making the corrections, or submitting verified documentation, and you can respond as quickly as possible to continue moving your application forward.
Following up on your Application
After you submit your response, the final step is to keep an eye on whether any follow-up is coming from the USPTO. The examining attorney will review your response and either accept your application and let it proceed or issue another office action if any issues are still left.
Few things to keep in mind:
- Be diligent about tracking communications: You should check the USPTO’s Trademark Status & Document Retrieval (TSDR) system for your application, including official communications.
- Be prepared for follow-up: If a second office action or request for clarification is issued, make sure you respond to it promptly, which may require revising your application, responding with further documentation, or providing additional evidence.
- Next steps toward approval: If all conditions are met, the USPTO will either accept your application for publication (if you filed on an intent to use basis), send you a Notice of Allowance (if you filed on an intent to use basis), or you will receive your final registration confirmation (if you filed on a statement of use basis).
Hire an Attorney to ease the process!
To ensure that your trademark application moves through examination and publication smoothly, it is important to make any changes and corrections requested by the examining attorney. Timely responses to these points of concern can speed up the overall process and increase your likelihood of receiving acceptance.
An office action from the USPTO will tell you that before your application proceeds, you must meet some requirements or overcome some objections. Rather than being a setback, think of it as an opportunity to improve the underlying quality of your application. Responding thoroughly and meeting the requirements outlined by the examiner gives your trademark a better chance of being accepted.
If there are any questions regarding office actions or you require assistance in any stage of your trademark registration process, please click the link below to book an appointment.
Please don’t hesitate to get in touch if you need any help with your trademark registration process. You can contact our firm by scheduling a discovery call, and we’ll be happy to answer all of those questions that have been on your mind. During this call, we can discuss your needs in more detail and come up with a plan tailored specifically for you.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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