The United States Patent and Trademark Office (USPTO) may issue a post-registration office action if your trademark renewal or maintenance filing failed in some way to meet the legal requirements. The office action is a formal notice to you that your registration is still active, but additional information or evidence, or corrections are necessary for the office to keep your trademark registration active.
- Section 8 Declaration of Use: This filing must be made between the 5th and 6th years of your U.S. trademark registration and then again every 10 years upon renewal of your registration. This filing is comprehensive proof that you are still using the mark in commerce on the identified goods or services. If you do not file this required Declaration of Use in the prescribed time frame, your registration will be cancelled.
- Section 71 Declaration of Use: This Declaration will be filed in a similar way and manner as a Section 8 Declaration of Use, but applies to trademarks obtained protection in the U.S. through the Madrid Protocol (international registrations). In order to maintain validity in the U.S., the filing must be made at the same intervals, demonstrating the mark is in use in U.S. commerce.
- Declaration of Excusable Nonuse (filed under a Section 8 or Section 71 Declaration of Use): If the trademark in question is temporarily not in use, the trademark owner may file a Declaration of Excusable Nonuse that explains the noted legitimate reasons for the nonuse (e.g., supply chain issues or other legitimate market conditions) with evidence of the owner’s intent to resume use. If filed successfully, the registration will not be cancelled in light of the owner’s temporary gap in use.
- Section 15 Declaration of Incontestability: After your mark has been used for five uninterrupted years, the owner can file this declaration, giving more weight to the registration. When the declaration is made, “incontestable” status will make it much harder for others to win a challenge against the validity of your mark on certain grounds.
- Combined Section 8 and 9 Renewal: Every 10 years, trademark owners must file a confirmation to show that the mark is still in use (Section 8) and a request to renew the registration itself (Section 9). The USPTO allows these to be submitted simultaneously, allowing the trademark to remain active without a lapse.
- Section 7 Request to Amend a Trademark Registration: Section 7 is the request to make non-material changes to a trademark registration. For example, the USPTO allows typographical corrections, a change in ownership, or a narrowing of specified goods in a registration. This kind of request under Section 7 will not be granted if the change to the mark in any way is material in nature.
It is important to have correct and complete filings according to USPTO regulations in order to maintain your trademark rights.
Definition and Explanation of Post-Registration Office Action
A post-registration office action is a document that the USPTO issues against your application number, and states, in detail, the reasons your trademark filing cannot be accepted or recognised for renewal or maintenance.
For example, the action could very well indicate a specimen refusal or some other documentation problem. The notice also includes general instructions on how to fix the problem, filing deadlines, and the name and email of the USPTO employee who issued the action.
You can call or email that address for clarification, but before you do, remember that USPTO agents cannot give legal advice; they provide information only as it relates to general procedures.
Deadline to Respond to the Office Action
In most instances, you will have six months from the date of issuance to file a response to a post-registration office action. Your response must address every issue raised in the action, as failure to address even one issue could render your response incomplete.
You will submit the response using the USPTO online form, and any government fees, if required, must be paid at that time. If your response meets all requirements and you have met all requirements, the USPTO will withdraw its refusal and accept your filing, and your trademark registration will remain in force.
The outcome of failing to respond to a deadline in an office action post-registration will depend on the nature of the renewal or maintenance filing.
Failure to Respond to the Office Action
There are two outcomes if the office action is not responded to:
When non-responsiveness cancels your registration:
If USPTO denies your Section 8 or Section 71 Declaration of Use and you do not respond to an office action issued in this regard, then your trademark registration can be cancelled. For instance, you didn’t submit a properly acceptable specimen that shows the use of your trademark in commerce. In such situations, the USPTO will cancel your trademark.
The same is true if you submit a combined Section 8 and 9 renewal filing, receive an office action, and do not respond. For purposes of trademark law, once a registration is cancelled, it has no legal rights and becomes invalid.
When non-responsiveness only affects the specific filing:
If the USPTO denies your Section 7 Request to Amend because the change requested is a “material alteration”, failure to respond would mean that your trademark will not be amended and your registration is still valid, as if the request had never been made.
Similarly, suppose you let an office action issued on a Section 15 Declaration of Incontestability go unanswered. In that case, your registration will remain active, but you will lose any additional legal benefits from the incontestability.
Get a Trademark Attorney to make your life easy!
Having an experienced trademark attorney to handle your post-registration office actions is a beneficial and time-saving decision. These office actions are usually technical requirements or subjective legal standards which, if misunderstood, might cause you to permanently cancel your registration or lose valuable rights.
An attorney can assess the applicant’s arguments as well as the USPTO’s objections, determine what evidence or corrective action to take, and file a full response that addresses all aspects of the office action within the required timeframe.
They can also help to ensure that filings, such as Section 8, 71, or 15 declarations, are free of any errors right from the beginning, so that there is less chance of an office action. They can also talk to the USPTO about procedural questions, monitor your registration’s status, and evaluate how to maintain the descriptive strength of your trademark registration over time.
In addition to keeping the details covered, your trademark attorney guards your trademark and saves you time, strife, and possible costs for re-filing.
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 applying to getting it approved.
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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