The following is an edited transcript of my video “Responding to a Trademark Office Action”.

After a trademark application is filed with the US Patent and Trademark Office, it is generally about nine months (as of May 2023) until anything is heard back by the applicant. A great majority of the time, the response is an office action. An office action is a letter—really a refusal—issued by an examining attorney at the USPTO that outlines what requirements have not yet been met in the application. In order to achieve a registration, an office action is issued in a majority of all trademark applications, even when experienced trademark council is used to file the application. Sometimes the issues are small and technical, such as: procedural, tweaking the description of the services, submitting additional evidence of using the trademark. Sometimes they’re more serious and substantive. The most common is a finding of a likelihood of confusion with a perceived conflict with another registration on the register already at the trademark office.

The applicant has three months to file a response, and there’s a lot of nuance that goes into an effective one: properly attaching evidence, knowing what the relevant case law is and how to cite to it, and there’s an art in crafting a argument. When a response is filed by the applicant, the examining attorney reviews it and determines whether the requirements have been met or the refusals have been withdrawn, or whether a subsequent and possibly final office action will be issued. If a final office action is issued, there still is a potential remedy to appeal the decision to a panel of judges at the Trademark Trial and Appeal Board (TTAB).

The important thing is whether or not the end result, is an approval, so I highly recommend using experienced counsel when going through the office action process.

For more about office action responses, and a sample, see Anatomy of an Office Action response to likelihood of confusion under Section 2(d)


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