Trademark Office Action in US

The USPTO may send a trademark office action during the US trademark registration process. A trademark office action is a communication from a trademark examining attorney regarding the issues in approving the registration. These include conflicts with existing trademarks, errors in the application itself, or the mark being merely descriptive. You need to respond to the office action within three months from the date of issuance, addressing the concerns and arguing the case for registration. This article provides an overview of trademark office action and how to respond appropriately. IndiaFilings helps you with US trademark registration with end-to-end support!! [shortcode_76]

What is a Trademark Office Action in US?

A trademark office action is an official communication from the United States Patent and Trademark Office (USPTO) informing applicants of potential issues with their trademark application. These issues can relate to the registrability of the trademark itself or deficiencies in the application. There are two main types of office actions:

Non-Final Office Action: This is the USPTO's first communication, and it provides an opportunity for the applicant to address the raised concerns.
Final Office Action: This is issued if the applicant needs to address the concerns in a non-final office action adequately. A final office action carries more weight and limits the applicant's options for response.

Reasons for Trademark Office Action

The USPTO may issue an office action for various reasons, including:

Likelihood of Confusion: The trademark is too similar to an already registered trademark for the same or similar goods and services, leading to consumer confusion.
Descriptiveness: The trademark merely describes the qualities or characteristics of the goods or services, lacking the distinctiveness required for registration.
Genericism: The trademark has become so widely used that it generically refers to the product category, not a specific brand.
False Suggestiveness: The trademark suggests a characteristic about the goods or services that is not true.
Defective Application: The application may contain errors or omissions, such as incorrect identification of goods and services or missing fees.

Common Types of Refusals in a Trademark Office Action

The following are the common types of refusal you can get due to trademark office action.

Likelihood of Confusion Refusal: This is the most frequent type of refusal, and the USPTO will cite specific examples of conflicting marks. Factors considered include similarity in appearance, sound, meaning, and the relatedness of the goods and services.
Descriptiveness Refusal: A descriptive term cannot be trademarked since it describes the product’s characteristics, quality, features, ingredients, and purpose of use. In this case, the USPTO refuses your trademark application. Trademarks are supposed to distinguish the brand, not to claim ownership.

If your mark is refused due to the likelihood of confusion, be sure to search for a trademark to detect the similarity with the registered trademarks

Common Types of Requirements in a Trademark Office Action

Some of the common types of requirements expected by the Trademark office action are:

Clarity Requirement: The USPTO may request clarification of the mark's depiction, especially if it includes stylised elements or designs.
Specimen Requirement: The USPTO may require additional specimens demonstrating how the mark is used in commerce.
Identification of Goods and Services Requirement: The USPTO may request clarification or modification of the identified goods and services in the application.

How to Respond to a Trademark Office Action in US?

There are two ways to respond to a trademark office action, which are followed by:

1. Respond through Phone or Email

To resolve minor legal problems related to your trademark application, the examining attorney suggests you call or email them such as clarify the goods and services. It will speed up the US trademark registration process. Your email communication with USPTO will be uploaded to the application record and made public on the USPTO website.

2. Respond Online through TEAS (Trademark Electronic Application System)

Most responses to Trademark Office Actions will be filed electronically through the Trademark Electronic Application System (TEAS). There are specific forms for different situations: use the "TEAS Response to Office Action" form for non-final actions and the "TEAS Request for Reconsideration after Final Action" form for final actions. Make sure to choose the correct form and ensure your response is signed by an authorized person (details on who can sign are provided in a separate section). If the USPTO raises concerns in an Office Action and you can't resolve them via phone or email, filing a complete response through TEAS is mandatory.

Who can sign the TEAS response form?

The person authorized to sign the TEAS response form depends on whether you have an attorney involved. If you don't have legal representation, the applicant can sign (e.g., an individual, partner in a partnership, corporate officer, LLC member). However, if you do have a trademark attorney handling your application, they must be the one to sign the response. They must be licensed to practice in the US and good standing with a US bar association. If the USPTO determines the submission is not signed by the right person, the submission will be rejected regardless of any arguments or evidence. Also read: How to keep your trademark registration alive?

Deadline For Filing a Response

Responding to a Trademark Office Action promptly is crucial. Generally, you have three months from the issuance date to submit a timely response, with an optional paid extension available for an additional three months. For applications under Section 66(a) of the Madrid Protocol, the deadline is six months with no extensions. Make sure to read the office action to determine the specific response to the deadline.

What Happens After Responding to a Trademark Office Action?

The USPTO will review your response and may issue one of the following decisions:

Allowance: If the USPTO finds your response satisfactory, your trademark will proceed to registration.
Final Rejection: If your response does not convince the USPTO, they may issue a final rejection. You can then appeal this decision to the Trademark Trial and Appeal Board (TTAB).
Non-Final Action: The USPTO may issue another non-final office action with further concerns or requirements you need to address.

Conclusion

Trademark Office Action from the USPTO is a communication highlighting potential issues with your trademark application. These issues could be conflicting trademarks, a merely descriptive mark, or errors in the application itself. You have three months to respond, addressing these concerns and arguing for USA trademark registration. This article explained the different types of Office Actions, common reasons for receiving one, and how to respond through TEAS (Trademark Electronic Application System) with the appropriate form. Remember, a timely and proper response is crucial for a successful trademark registration. Get help from IndiaFilings experts to respond to the trademark office action!! [shortcode_76]