What is a Trademark Office Action


After filing a trademark application, the United States Patent and Trademark Office (USPTO) may decide to halt the progress of your application and document the reasons for doing so in an official letter known as an Office Action. Critically, Office Actions are not necessarily final rejections and if the legal issues, whether procedural or substantive, are addressed in your response to the Office Action, your trademark application will proceed. Obviously, having a top trademark lawyer with a deep understanding of trademark law and experience in filing office actions is essential. As trademark law is complex, there are a variety of prospective reasons Trademark applications may be rejected.  Procedural reasons usually involve relatively minor issues (the name of the applicant is incorrect, bits of necessary information are missing or in conflict etc.) while substantive reasons are often more challenging to overcome and require legal arguments to overcome to the trademark examiners objections.

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Dates Matter: When You Need to File a Response to the Trademark Office Action

Keep Your Eyes on the Six Month Mark

The USPTO is a stickler for being on time.  In the event that the Trademark examiner issues an office action, the applicant must submit a response to the office action, accounting for ALL of the stated legal issues, within six months of the issuance of the action.  In Office Actions that raise both procedural and substantive issues, this can be particularly confusing.  Please discuss each issue carefully with a trademark lawyer to get a sense of the scope of the response needed and how much preparation will be required to draft and submit the response.

The USPTO is not entirely unforgiving and if you happen to miss the 6-month period, you may be able to request an extension of time to submit your response.  You can expect the USPTO to charge an extra fee for granting this time allowance. 

How to File a Response to a trademark Office Action


Step 1:  Speak With Someone at the USPTO

The USPTO has quite a good team of administrators and associates who can answer certain fundamental questions surrounding your application.  Notably, they cannot and indeed will not offer any sort of legal advice but if you have any technical or administrative issues, they can typically point you in the right direction.  For any substantive questions, please speak with your trademark lawyer who can if need be, contact the trademark examining attorney on your behalf.


Step 2: Contact a Trademark Lawyer

Trademark office actions can be complex and you should first speak with a top trademark lawyer to discuss the nature of the legal objections raised in your trademark office action.  It may very well be the case that the trademark attorney feels that he can clear it all up with a quick (and persuasive) phone call to the examiner.


Step 3: File the Response to the Trademark Office Action through TEAS

Fortunately, the USPTO relies on a fairly efficient, online platform called the Trademark Electronic Application System (TEAS) to manage the various correspondences surrounding the issuance and response to the trademark office action. Assuming your application is eligible to be processed through TEAS, your trademark lawyer will be filing all correspondences through it.


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Trademark Office Action Response – Check List


Guidelines for Responding to Trademark Office Actions

Remember, every single office action is unique and is responsive to specific issues that are problematic to the particular trademark application. Fundamentally, there are two types of trademark office actions; Substantive Trademark Office Actions and Procedural Trademark Office Actions.  Make sure your response to the trademark office action accounts for both.

  1. Read the Office Action Very Carefully
  2. Discuss the Office Action With a Trademark Lawyer
  3. Ensure the Response to the Office Action Deals With Both the Substantive and Procedural Problems
  4. File a Response to the Office Action Within the 6-Month Period

How to Respond to a Trademark Office Action? Don’t Go It Alone

Trademark Office Actions can be seriously complicated and involved. Please Contact a Trademark Lawyer to discuss your case.

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