Responding to USPTO Office Actions

What happens to a trademark or patent application when an Office Action from the USPTO goes unanswered? The application will be declared abandoned at the end of the allowed response time. This is applicable both for unanswered non-final actions as well as unanswered final actions.


Need an Attorney for working with the USPTO?

Getting the right help can mean better results: Facts Matter and being able to apply the law to the facts is something that is very important in the trademark and patent field. Unfortunately many  applicants (and their attorneys) have trouble and nearly half of trademark and patent applications end up going abandoned! Not Just Patents® Legal Services has an excellent record for working with the USPTO. We can help you with Responses to Office Action; File or Defend a Trademark Opposition or Cancellation; Patent or Trademark Searches and Applications. We also Send or Respond to Cease and Desist Letters (these are not a USPTO activity ).

Because there are so many facts involved with any of these processes or proceedings, we have divided up the information by topic on our web sites. Please see the bottom of this page for a list of topics and where to find more information.



TRADEMARKS

When do I have to respond?

Timely Response: If you have received by mail or email an:

  • Office Action from an examining attorney regarding your application;
  • a Priority Action;
  • an Examiner's Amendment/Priority Action (where a response is still required for the "Priority Action" portion);" or
  • a Suspension Inquiry letter,

you must respond within six (6) months of the mailing date of the Office action or your application will abandon. If the Office Action is a "Priority Action," responding within two (2) months will give you priority handling; however, you do have the full six (6) month response period, if necessary.

This means that your email response must arrive on the USPTO server prior to Midnight, Eastern Standard Time, of the last day of the response period- any problem with transmission will not excuse an untimely response. Should the last day of the response period fall on a Saturday, Sunday or U.S. Federal Holiday, you may submit your response prior to Midnight, Eastern Standard Time, of the next regular business day and it will still be considered timely.

TMEP 303.01 For paper correspondence, the date of actual receipt in the USPTO is assigned as the filing date of all correspondence. (TEAS and TEAS Plus correspondence must be filed electronically.)


TMEP [Trademark Manual of Examining Procedure] 718.02 Failure by Applicant to Take Required Action During Statutory Period

15 U.S.C. §1062(b). If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.


 Trademark Applications

What are Office Actions and How to Respond to an Office Action from the USPTO


Office Actions

Office actions are first action correspondences from the assigned USPTO  trademark examiner that set forth the legal status of a trademark application if the trademark application does NOT meet registration requirements.

There are several types of office actions:

1. Examiner’s amendments;

2. Priority actions;

3. Office actions (non-final and final); and

4. Suspension letters.

Note: If the trademark DOES meet registration requirements, the first action of the USPTO (the ‘TRAM Snapshot of App at Pub for Oppostn’) may go unnoticed by the applicant until the applicant receives a postcard or email of the ‘Notice of Publication.’


Types of Office Actions

(from http://www.uspto.gov/trademarks/process/

update/oa.jsp)

   1. Examiner’s Amendment

      An examiner’s amendment is a written confirmation of an amendment made to an application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.

     

   2. Priority Action

      A priority action is a letter [electronic] in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant’s attorney. Unlike an examiner’s amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding.

When the Office Action is a "Priority Action," responding within two (2) months will give you priority handling; however, you do have the full six (6) month response period, if necessary).

      The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      

 3. Office Action

      An office action is a letter in which an examining attorney sets forth the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.

      Applicants must respond to an office action within 6 months from the date the office action is mailed. If applicants fail to do so, their applications will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      There are two types of office actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only response to a final office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.

 

  4. Suspension letters

      A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application]. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.


 How to Respond to Office Actions

There is no set form or required format for responding to an office action. Applicants should address each issue raised by the examining attorney.

Responses to office actions must be received within 6 months from the mailing date on the office action. There are no extensions to this deadline. Examining attorneys have no discretion to extend the time period for filing. If applicants do not submit a timely response to an office action, their applications will be declared abandoned.

Responses to office actions may be submitted online using an electronic form through TEAS (Trademark Electronic Application System) , and by facsimile or regular mail.


Responding to Final Office Actions (Trademarks)

A Request for Reconsideration is necessary after issuance of a final Office action and must be submitted before the deadline for filing an appeal. The filing of a Request for Reconsideration does not extend the time for filing an appeal or other proper response to the final action. 37 C.F.R. §2.64(b). A Notice of Appeal is a different form that you must file separately to preserve your right to appeal the final refusal, if appropriate. See http://estta.uspto.gov. If you file a Notice of Appeal concurrently with a Request for Reconsideration, your application will be referred to the Trademark Trial and Appeal Board (TTAB) for processing of the appeal. The TTAB will (1) acknowledge the appeal; (2) suspend further proceedings with respect to the appeal (including the applicant’s time to file an appeal brief; and (3) remand the application to the examining attorney for review of the Request for Reconsideration. TMEP §715.04; TBMP §1204.



Answering Office Actions

There are few canned answers on how to answer trademark office actions because there are few typical refusals, (ornamental refusals for clothing being one exception). General advice in answering office actions does not take actual applications into account. Registration of a trademark is specific to the facts involved and involves legal rights (it is Not Just a form).

Some refusals are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes (this is often the answer for an ornamental refusal). Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. It depends on what is being refused and why.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law because they  are conflicting marks and someone else has prior rights to that mark. Some trademarks lack a minimum level of distinctiveness, lack acquired secondary meaning or the capability of acquiring secondary meaning. In these cases, sometimes secondary meaning can be proved, distinctiveness can be argued, or registrations may be amended to the Supplemental Register.


If you have received a refusal, even if you don’t pursue answering the office action and seeking registration, it may be valuable to your firm to evaluate if you should even keep using the mark. A new party seeking registration puts diligent trademark owners on notice for potential infringers and clearing up the registration issues may also clear up potential infringement issues. In other words, a new party applying for a trademark that conflicts with an already registered mark is giving national notice of an intent to infringe or perhaps actual use in commerce that is infringing. Some new parties receive cease and desist letters before their applications are even examined and are forced to expressly abandon their applications or face lawsuits.


If your trademark has value and you want to save the money that you have already invested and secure more rights through federal registration, call us at 1-651-500-7590. We have an excellent track record of getting marks registered. Many law firms and registration services actually have terrible records for getting marks registered. Dare to compare!



Call us at 1-651-500-7590 with questions, requests for searches or applications or requests for quotes.  

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


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Aim Higher® Facts Matter

ResponseOfficeAction.com


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us