TRADEMARK LEARNING CENTER - by TRADEMARKS ON CALL®

Provided by Trademarks On Call®, the Trademark Learning Center is for informational purposes only, not legal advice. Select a topic below to learn more about trademarks:

Trademarks | Office Actions | Notices of Allowance | Statements of Use

Trademark Renewals | Abandoned Applications | Cancelled Trademarks

WHAT IS AN OFFICE ACTION?

An Office Action is an official letter sent by the U.S. Patent and Trademark Office (USPTO) that sets forth any problems with your trademark application including any legal problems with your trademark. You must resolve all legal problems set forth in an Office Action before the USPTO will register your trademark. The two most common types of Office Actions are: 1) non-final Office Actions, and 2) final Office Actions.

A non-final office action sets forth a legal problem with your trademark application for the first time. You must file a response within 6 months of the date the Office Action issues. If the response resolves all legal problems set forth in the non-final Office Action, your application should proceed toward registration. If your response fails to resolve all legal problems, the USPTO will send you a final Office Action.

A final Office Action sets forth a legal problem regarding your trademark application for the last time. The USPTO issues a final Office Action only after all legal problems with your application have been raised at least once already. A final Office Action provides your last opportunity to attempt to resolve all legal problems with your application. You must file a response within 6 months of the date the Office Action issues. If your response resolves all legal problem set forth in the final Office Action, your application will proceed towards registration. If your response fails to resolve all legal problems, the USPTO will abandon your application unless you have timely filed an appeal with the Trademark Trial and Appeal Board.

DEADLINES FOR OFFICE ACTIONS

Generally, a response to an Office Action must be filed within 6 months from the date the Office Action was issued. However, some types of Office Actions may have a shorter deadline, so be sure to read the Office Action carefully. If an applicant does not file a response before the deadline (or files a response after the deadline), the USPTO will abandon the trademark application. Generally, the USPTO cannot grant an extension of time to file a response. To make sure you do not miss a deadline, you may want to consult with a licensed trademark attorney.

COMMON REFUSALS IN OFFICE ACTIONS

The USPTO may list a variety of refusals or requirements in an Office Action. Below are listed some of the most common refusals and requirements - given the complexity in responding to and resolving such refusals and requirements, you may want to consult with a licensed trademark attorney.

Requirement for "definite" identification of goods or services: If the USPTO determines that the description of some or all of the goods or services listed in your application is unclear, indefinite and/or too broad, it will require that you modify your description with wording that is more "definite" - i.e., wording that is more specific, clear, accurate and concise.

"Disclaimer" Requirement: When the USPTO determines that a specific term or design in your trademark cannot be registered, the USPTO may require that you disclaim a portion of your trademark. A disclaimer is a statement that you do not claim exclusive rights to a specific term or design in your trademark. A disclaimer does not change the appearance of your trademark. The USPTO typically requires a disclaimer when it determines that other people or businesses also need to use a specific term or design to describe their goods or services, and this use should not subject them to threat of a lawsuit for infringement of a registered trademark.

Refusal of Specimen: Before the USPTO will register your trademark, you must prove that you are using your trademark in commerce, by filing a real-life example of how your trademark is used to sell and/or promote your goods or services. This real-life example is called a specimen - e.g., a photo of your your product or product packing bearing your trademark or a screenshot of your website displaying your trademark. The USPTO will issue a specimen refusal if it determines that your specimen is somehow deficient or you did not submit a specimen.

"Likelihood of Confusion" Refusal: The USPTO issues a Section 2(d) "likelihood of confusion" refusal when it determines that your trademark is similar to a registered trademark that is used with goods or services related to your goods or services. Under such circumstances, the USPTO is of the opinion that a consumer is likely to be confused about the source of your goods or services. Ways in which you may argue against such a refusal include: 1) argue that your trademark differs from the registered trademark, 2) argue that your goods/services differs from those in the registered trademark, 3) amend your goods/services to a particular field of use, 4) monitor the registered trademark to see if it is cancelled, and 5) seek a consent agreement from the owner of the registered trademark, where the registered owner consents to the use of your trademark.

"Descriptiveness" Refusal: The USPTO issues a Section 2(e)(1) "descriptiveness" refusal when it determines that all the text or design in your trademark merely describes some characteristic of your goods or services. The USPTO issues this refusal when it determines that other parties need to be free to use such descriptive language in characterizing their own goods or services to the public, without being subjected to the threat of a lawsuit for infringement of a registered trademark. Ways in which you may argue against such a refusal include: 1) submit reasons why your trademark is not descriptive, 2) amend your application to the Supplemental Register or to add a Section 2(f) claim that your trademark has acquired distinctiveness, and 3) amend your goods/services to a particular field of use.

Disclaimer: Trademarks On Call is not a law firm or a substitute for an attorney or a law firm. Trademarks On Call does not provide legal advice. The information provided on this website is for informational purposes only and does not constitute legal advice.