Once a trademark application has been filed, it generally takes the USPTO approximately at least six months to complete its initial review. The review that takes place at that time is the first substantive step in the application process (many other behind-the-scenes steps take place when the application is filed, coded, and entered into the USPTO database). In the majority of cases, an Office Action is issued by the USPTO—even when the application is filed by an attorney.
An Office Action is a response from a USPTO examining attorney following the review of the trademark application. An Office Action can cover procedural issues, substantive issues or both, and can cover numerous issues or just a single issue. Regardless, responding can be complex and all applicants have six months to respond to the first Office Action.
Over the years, our firm has filed thousands of Office Action responses with the USPTO.
An effective response requires nuance, such as knowing the relevant laws and cases, crafting in argument, attaching evidence, and possibly amending the application to change the analysis. While it is possible to respond without an attorney, the risks of getting it wrong and the time needed to review and understand the relevant rules and procedures are significant, and an improper or incomplete response can jeopardize the application, alter the protection available, result in additional USPTO fees, or delay the application process. For these reasons, it is very important to ensure that the Office Action response is handled properly.