A USPTO trademark Office Action is a formal letter issued by an examiner at the United States Patent and Trademark Office (USPTO) in response to an application for a trademark registration. The letter will typically include a list of issues or problems that the examiner has identified with the trademark application, such as a likelihood of confusion with an existing registered mark, or the mark is too similar to a existing mark. The applicant must then respond to the Office Action by addressing the issues raised and providing additional information or arguments as necessary. If the examiner is satisfied with the response, the application will be allowed to proceed. If not, the applicant may be required to make further revisions or may even have the application denied.
*As of December 3, 2022, trademark applicants have three (3) months to respond to office actions issued during the examination of trademark applications filed under sections 1 or 44. You can request one three-month extension per office action for an additional $125 filing fee.
What do you do upon Receiving a Trademark Office Action?
Upon receiving a USPTO trademark Office Action, a trademark applicant has several options on how to proceed. The most common response is to address the issues raised by the examiner and provide any additional information or arguments that may be necessary to overcome the objections. This is typically done by submitting a response to the Office Action, which must be filed within three (3) months of the date of the Office Action.
The response should be drafted carefully and provide a detailed and comprehensive argument addressing the issues raised by the examiner. It should also provide any additional information that may be necessary to overcome the objections. If the applicant is unable to resolve the issues raised in the Office Action or if they disagree with the examiner’s assessment, they may also consider appealing the Office Action to the Trademark Trial and Appeal Board (TTAB).
Another option is to amend the application, which is also called “amending the specimen”, but it would depend on the issues raised in the office action.
It is advisable to consult with a trademark attorney who can help you understand the Office Action, evaluate your options, and prepare a response that gives the best chance of overcoming the objections.