Once an federal trademark application is filed with the USPTO, the application will either be approved or refused after about 3-4 months. If the trademark application has been refused, then the examining attorney will send the individual whose name is on the application, a “office action.”
The purpose of a USPTO office action is to notify the applicant of any problems that arose during the examination process. The USPTO office action usually contains one or both of two things: (1) notice of informalities, or (2) basis for rejection of the trademark. For an office action that contains informalities with the application, this usually involves matters such as attaching an inadequate sample showing how the trademark will be used, or providing insufficient information in order for the examining attorney to determine exactly what the goods provided in the application are. When the office action states the basis for a refusal of the trademark, the two most common reasons are (1) the trademark will likely cause confusion with an existing trademark or (2) the trademark is descriptive. The USPTO office action will also contain what requirements must be satisfied. The deadline for an applicant to file a full and proper response to an office action is six months from the date of receipt of the USPTO office action. If the applicant fails to respond during this time, the application will be ruled abandoned.
There are two types of the USPTO office action that the examining attorney could send the applicant: final and non-final actions. A non-final action occurs in the first instance of an issue. The final action is sent when an applicant’s response to the prior office action fails to address or overcome the issues in that action. The only response available for an applicant to the final office action is to either comply with the action or to appeal the final action to the Trademark Trial and Appeal Board.
Two responses are realistically available to an office action. (1) comply with the requirements listed by the examining attorney, or (2) try and convince the examining attorney to find your way. Each refusal is specific for each trademark application, therefore, the likelihood of convincing the examining attorney of your view will differ in each case. An argument alone will not successfully convince the examining attorney to find for your side. In order to overcome an examining attorney’s refusal, convincing evidence showing: consumers will not confuse the two trademarks; consumers have already distinguished between the proposed trademark and the existing trademark; evidence suggesting that the proposed trademark is not generic or descriptive and has a secondary meaning.
Depending on the availability of evidence will determine the appropriate response to an office action.