Trademark Office Action Response: Procedural Requirements

If you've filed for a trademark, you're likely to receive an Office Action Response from the USPTO. Here's an overview of how the process works.

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Statistics say if you file a U.S. trademark application you also have to file an Office action response.  Responses vary, however, you need to follow the only available procedural process.

The majority of U.S. trademark applications receive an Office action from the United States Patent and Trademark Office (USPTO).  In fact, 82% of TEAS trademark applications so far this year have received an initial Office action according to the USPTO Data Visualization Center.  The complexity of the matters can range from a simple application correction to a legal argument against likelihood of confusion predicated upon the nuances of phonetics.  In either case, the applicant needs to follow the same procedural rules.

The Initial Waiting Period

You can expect to hear back from an examining attorney between three to six months after you submit the mark for registration.  During that time, the examiner reviews your application and determines whether it meets the requirements for registration.  Specifically, the examiner ensures the trademark complies with the Act of 1946, 15 U.S.C § 1051 et. seq (the Lanham Act) and the Trademark Rules of Practice 37 C.F.R. Part 2.  In addition, the examiner commonly seeks instruction from the Trademark Manual of Examining Procedures (TMEP).  After reviewing your application, the examiner is likely to issue an Office action, which triggers a six-month deadline for a response from the date of the issued Office action.

Your First Office Action

Brace for the worst, but hope for the best.  As long as you conducted a comprehensive search prior to filing your application as well as consulted the basic rules of the Lanham Act, you have nothing to fear.  In other words, if you did your homework you know what to expect in the Office action.  You hope to avoid Lanham Act §2 rejections. Office actions with §2 rejections require persuasive legal arguments or agreeing with the examiner’s amendments.  Apart from an Office action for a void application, a likelihood of confusion rejection, based on §2(d), represents the most difficult rejection to overcome.  A likelihood of confusion rejection requires the applicant to submit legal arguments showing the differences between the applicant’s mark and the confusingly similar mark(s) referenced by the examiner.  The applicant should rely on the du Pont factors in their response, focusing on the marks in their entireties as well as the relatedness of the goods or services.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Those applicants who did not seek the use of an attorney to file the trademark application are advised to seek assistance of a trademark attorney for any responses that require addressing §2 issues.  Once received, you have six months from the date of the Office action to gather your thoughts and respond.

Your Response to a First Office Action

You need to make sure to address each of the examiners refusals in your response.  An examiner can reject an application on a number of different aspects.  For example, the mark TIGER WOODS HIGH PEAK GOLF COURSE NEW HAMPSHIRE would most likely receive a §2(a) rejection for falsely suggesting a connection with a living individual, a §2(e)1 rejection for mere descriptiveness, as well as a §2(e)2 rejection for being geographically descriptive.  Make sure to address every issue presented by the examiner.  Failure to do so authorizes the examining attorney to issue a final Office action.  Returning to our example, if you successfully respond to both §2(e) rejections, but fail to mention Tiger’s stamp of approval you will likely receive a final Office action on §2(a) grounds.

Your Response to a Final Office Action

The examiner has discretion on whether to issue a final Office action or a non-final Office action.  However, if the applicant does not resolve all the outstanding issues in the response or raise any new issues, the examiner should issue a final Office action.  TMEP §§ 713, 714.  Once again, you have six months to file a response.  Additionally, your response after a final action is limited.

You have three options:

1. Comply with the examining attorney’s requirements
2. Appeal to the Trademark Trial and Appeal Board (TTAB)/file a request for reconsideration
3. Petition the Director if permitted by C.F.R §2.63(b) (§2 rejections are not subject to petition)

You cannot enter in new evidence with an ex parte appeal to the TTAB.  You can enter in new evidence after you file a request to reconsider.  File both and submit additional evidence.

Publishing

After you successfully overcome the refusals your mark gets published in the Official Gazette – a weekly online publication displaying the marks the USPTO plans to register.  This publication begins a 30-day opposition period.  Anyone who feels your mark conflicts with theirs can file an opposition with the TTAB.  No further action occurs until the opposition is resolved.  If no one opposes your mark, you will receive your registration certificate approximately three months after publication.

You can feel disheartened after receiving an Office action, but as long as you did your initial research, you should be fine.

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