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.

In 2012, close to half of all USPTO patent applications and trademark applications that were disposed of were abandoned, most of these after the first office action went unanswered when the applicant did not respond or did not know how to respond and some after years of work trying to get them registered (trademarks) or issued (patents).

Need a Trademark Attorney or Patent 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.

According to the AIPLA Report of the Economic Survey 2009, on average, law firms charge $1,440 to perform a trademark clearance search, analysis, and opinion, $867 to prepare and file a trademark application, and $1,678 for prosecution of a trademark registration.  A Five Step Verification, application, and prosecution by Not Just Patents® Legal Services usually costs less than even one of these fees and we have a high success rate. Our trademark goals are to register strong trademarks, have long term clients, repeat business, and good referrals. Help us to meet our goals and we can help you to meet yours.

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.

PATENTS

When do I have to respond? The response time for an office action for a Patent Application varies depending on circumstances, the minimum period of time is 30 days, the maximum period of time is six months after which time the application is declared abandoned. Note: The notice of abandonment will be issued later than the effective date of abandonment.

35 U.S.C. 133 Time for prosecuting application [patent].

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Director that such delay was unavoidable.

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.

Patent Applications

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

Office Actions [Step 10 from the Process for Obtaining a Utility Patent]

( some sections are excerpts from http://www.uspto.gov/patents/basics.jsp#office)

The applicant is notified in writing of the examiner's decision by an Office “action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner; relatively few applications are allowed as filed.

Note: There is a difference between rejections and objections–MPEP 706.01 [Rejections] Contrasted With Objections. The refusal to grant claims because the subject matter [substance] as claimed is considered unpatentable is called a “rejection.” The term “rejected” must be applied to such claims in the examiner’s action. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made.

HOW TO RESPOND TO PATENT OFFICE ACTIONS

37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.

(a) (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.

(2) Supplemental replies.

(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner suggestion(s);

(C) Placement of the application in condition for allowance;

(D) Reply to an Office requirement made after the first reply was filed;

(E) Correction of informalities (e.g., typographical errors); or

(F) Simplification of issues for appeal.

(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

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!

Answering Office Actions

There are few canned answers on how to answer patent office actions because there are few typical rejections. The language in a patent application, amongst other things, is required to give adequate notice to potential infringers on what constitutes infringement (very fact specific).  General advice of answering office actions does not take actual applications and the prior art into account. A patent application is an application for legal rights and is Not Just a form.

The strategy for and implementation of a strategy for answering patent office actions depends on what type of refusals are given. Some choices of how to answer office actions include:

• Rewrite claims to be definite and to distinctly claim the subject matter if the claims were rejected under 35 USC 112 including rewriting claims with proper antecedent basis and supplying essential structural cooperative relationships of elements if needed;
• Arguing that the claims are not anticipated by prior art or are non-obvious by pointing out that the examiner’s position is not supported by prior art references.This cannot be done by making general statements but must be done by making specific arguments comparing the references and what they teach and comparing the claims to those specific teaching showing any way that the reference does not include or teaches away from the claims;
• Amending claims to specifically define how the invention furthers the field beyond the prior art and arguing how these amendments are be supported in the specification; and
• Canceling claims, narrowing claims or combining dependent claims with independent claims (where dependent claims are rewritten in independent form including all of the limitations of the base claim and any intervening claims).

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

Call 1-651-500-7590 or email info@notjustpatents.com for  Trademark Help; Responses to Office Action; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Application; Send or Respond to Cease and Desist Letters.

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

Patents

Trademarks

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Strong Trademark  Trademark Inherent Strength   Enforcing Trade Names

Common Law Trademarks     Trademark Goodwill Trademark Protect

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal (a type of Specimen Refusal)

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

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

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

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

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose