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. Note: the notice of abandonment will be issued later than the effective date of abandonment.


The response time for an office action for a Trademark Application is six months from the mailing date of the office action. After that time the application is declared abandoned.


TMEP 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.



 WHAT ARE OFFICE ACTIONS AND HOW TO RESPOND TO AN OFFICE ACTION FROM THE USPTO

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.

      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.

      The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing.

  

 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. Very often the trademark examiner will give advice on how to answer the office action.

Actual examples of general responses suggested by a trademark examiner follow. The first is for a ornamental refusal on a t-shirt is (very common refusal):

The applicant may overcome the above-stated ornamental refusal by doing one of the following, as appropriate:

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §§1202.03(d) and 1212.06 et seq; or

(2)   Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods. University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, the applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through the applicant’s use of the proposed mark with goods or services other than those identified here. In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  The applicant must establish that, as a result of this use on other goods or services, the public would recognize the applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

(3)   Submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); or

(4)   Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

Another example of trademark examiner advice to overcome a refusal for Failure to Function as a Mark for a trademark application for a band name:

Applicant may respond to this refusal by (1) submitting evidence that the mark has been used on at least two recordings, and (2) amending the identification of goods to state that the sound recordings comprise a series, i.e., series of pre-recorded compact discs, Digital Versatile Disk, audio cassettes, video cassettes, and phonograph records, all featuring music and/or musical performances; Downloadable musical sound recordings; Downloadable video recordings featuring music and/or musical performances, in Class 9.



Trademark Help: 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). Many first time applicants mistake drawings and specimens and submit only drawings. Sometimes a better identification of goods and services is required not just for the application but also to actually specify what is in actual use. Improper identification can cause an application or registration to be void or may indicate fraud. See Fraud on the USPTO for more information.


 See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.


Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses-loss of assumption of authenticity, loss of the right to protect from counterfeits, and loss of reputation. In today’s economy (and for the future), Intellectual Property Protection may be one of the best ways to invest in your business. Call us with questions at 1-651-500-7590.



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