What Is an Office Action?
An Office Action is a response to a trademark registration initiated by the US Patent and Trademark Office when the attorney assigned to examine your registration has concerns about your application.
The issuance of an office action does not necessarily mean that your registration is denied or even about to be denied, but it is something that requires a response within a fixed time-frame. Failure to respond to an office action or to correct whatever it is that the examining attorney finds lacking in your trademark application may indeed result in a denial.
There are 2 types of office actions: administrative and substantive.
- Administrative Office Actions
- Substantive Office Actions
An administrative office action could simply be an expression of the examining attorney’s own confusion regarding the nature of the products you are selling, or a request for the correction of something in the application of a typographical nature. Another example might be the need for clarification as to who (or what entity) owns the mark … Was it filed in a person’s individual name vs. a corporation vs. a partnership?
This sort of “non-final” office action is noting problems and giving you the opportunity to correct them.
The second sort of office action, the “substantive” action, is more serious. These are complaints regarding the proposed trademark’s likelihood of confusing consumers as to the source and quality of your goods or services, a complaint that the trademark is “merely descriptive” (of the goods or services sold), or a number of other points hitting at the viability of the mark itself.
If you did not respond to an initial “non-final” office action, additionally, the USPTO may issue a “final” office action that requires immediate attention.
Generally, you have 6 months to respond to and remedy an office action. A good trademark registration attorney will work to avoid common errors from the outset and, when an office action does arise, will not let 5.5 months slide by before attending to your situation.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting craft brewers, vintners, distillers, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
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