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Anatomy of a USPTO Office Action Response

Posted by admin on: November 10th, 2010

After an application for a trademark registration with the U.S. Patent and Trademark Office (“USPTO”) is reviewed, an Examining Attorney from the USPTO will often issue an Office Action if there is are any substantive refusals and/or any procedural issues regarding the application.  The applicant then has six month to respond and submit arguments and/or evidence regarding the substantive refusals and to attempt to correct any procedural issues.  Procedural issues may relate to the evidence of use submitted; the description of goods or services; the drawing of a logo; the name, address or citizenship of the applicant; and many other issues. Substantive issues could relate to the finding of a conflict with a registered trademark; disclaimer of descriptive matter; failure to function as trademark;  a finding the trademark is descriptive or mis-descriptive; a name which is primarily merely a surname; or one of many other issues.

Below is an actual response to an Office Action addressing several issues. This response was filed by our firm and is a public record. Some highlights of the response:

  • Identifying the applied-for trademark, the serial number, the USPTO Examining Attorney and the Law Office. The USPTO has thousands of pending applications. Making sure the response is paired with the proper file and does not get misplaced is important.
  • Response to an information request. The USPTO may request more information about an applicant’s goods or services in order to properly evaluate the substantive or procedural issues. The applicant must provide the information requested or the application could be denied.
  • An amendment to the “recitation of services.” The description of services or goods must conform to the USPTO standards and guidelines, which are in part to align our trademark registration system with those of other countries around the world. An amendment to the description cannot expand the scope of the applied-for goods or services. A proper description is critical to defining the scope of protection granted by the registration. If it is too broad, the registration could be attacked by other parties. If it is too limited, the registration might not be provided as much protection as possible.
  • An argument regarding a disclaimer requirement from the Examining Attorney. A disclaimer of wording in a USPTO registration is an admission that it is descriptive, weaker, and entitled to less protection. Therefore, avoiding disclaimers when possible and reasonable is advisable. Here, the Examining Attorney had requested a disclaimer of wording  she perceived to be descriptive. I argued that the wording was not descriptive of the Applicant’s services. As part of the argument, I cited numerous registrations owned by other parties containing part of the same wording without any disclaimer requirement. To present the argument these registrations were put into an easily read table and the actual registration certificates were attached as evidence. Dictionary definitions were also presented as part of the response. The Examining Attorney subsequently withdrew the disclaimer requirement.
  • The first two pages of the response are generated by the electronic filing system of the USPTO, to which a PDF containing the remainder of the response, including the arguments and the evidence, were uploaded and attached.

A proper Office Action response involves proper timing (i.e. not missing the deadline), addressing any procedural items, as well as addressing the substantive issues. An applicant is provided at least one opportunity to correct or argue about any issue before a “Final Office Action” is issued.  If a “Final Office Action” is issued, the applicant still may have an opportunity to amend its application to correct any defects, to submit a “Request for Reconsideration,” or to file an Ex Parte Appeal to the Trademark Trial and Appeal Board.

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