Trademark office action Response: How to approach for it?

Merely filing the trademark application doesn’t guarantees that you will get trademark registration for your brand. Once you file the application, the examiner at USPTO reviews it and finds the applicability of your application on USPTO parameters. Later, he issues a later that contains the reviews and reports of examination. Thus the letter that contains the reasons for rejection of your application is trademark office action report. You need to file a trademark office action response in order to register your trademark. If there is no office action, your application moves for next step, else you need to respond to it.

Thus, if you want to know how to respond to a trademark office action, you are at right place. This article will tell you practical tips in meeting the needs of USPTO and forming a right trademark office action draft.

Also read: Trademark Your Business Name: Most Common FAQs

Types of Trademark Office Action by USPTO

There are majorly two types of issues that you can face in trademark office action  report:

  • Refusal of registration
  • Requests for clarification, modification

Let’s study about them in detail below:

Substantive (refusal action) vs Non-substantive trademark office action

When the examiner upon reviewing your application finds it non-feasible, he issues refusal to registration of your trademark. This is referred to as, substantive office action. The common reasons for such type of office action are:

  • Existence of prior art, i.e. likelihood of confusion on a trademark which is prior registered.
  • Not much description about trademark details is there in the application.

A prior knockout search before filing your trademark application is necessary to avoid substantive office action. You can reduce the risk of choosing prior registered trademark. As this will give you an opportunity to assess the risk of rejection of your trademark, and if feels necessary you can develop the different mark.

However, be it developing a unique trademark, or filing a trademark office action response, you need the help of a professional trademark paralegal. They help you write a well neat and clean trademark description. They write the words that describe the trademark well and reduce the risk of office action.

On the other hand, a non-substantive office action asks you to provide more information about your trademark. A few examples of such more information is:

  • A disclaimer about the generic term
  • Amendments to the identification of goods and services
  • More service specific information about the products and services of trademark
  • Revisions to description of trademark
  • A clear logo image of your trademark in JPG format or as asked by examiner

Deadline of Trademark Office Action Response

Don’t think trademark office actions on the line of patent office actions, both of them are different. A trademark office action response deadline is non-extendable, and it is 6 months from the date of issue of office action report. If you fail to file the response by this date, you will get no extension to file the office action response. Thus, ensure to meet this deadline with the help of a trademark paralegal.

Also read: Office Action on Patent: Reasons & Solutions

Madrid trademark Office Action Response

For Madrid trademark application falling under 66(a) section, 6 months is the deadline for filing the response. These 6 months are time from the date the USPTO sends the office action report to WIPO. Here only a licensed trademark attorney or paralegal is qualified to file the response with USPTO. Anyone else like, the non-lawyer agents are not qualified to do so.

Office actions under Madrid protocol applications contain suggestion to bring modification for identification of goods and services. If there is no substantive office action, then you can simply file the trademark office action response with the help of your trademark attorney or paralegal.        

Response to non-final office action

The initial Office Action issued in a trademark application is not final. The applicant will be provided with the opportunity to address any Office Action. In order to be fully complete the issues in office action report, you need to explain them properly in the response draft.

The timeframe that you submit Your Office Action response requires some strategies that you should discuss with your trademark lawyer. Consider, a registration with a renewal coming due in less than 6 months is cited against your application. In this scenario it might be beneficial to hold off the response. After a period of time you should check the status of your registration to determine if the renewal was filed. In the event that it has not been filed, you could be able save the expense and stress of making arguments. Therefore, delaying your response could save you from costly legal battles.

Response to a final office action

If the examiner is not convinced by your arguments presented in your response in the response to the not-final Office Action, a Final Office Action is issued. Final Office Actions can be ruled on fairly when trademarks are rejected because of a potential for confusion or simple descriptiveness. In lieu of repeating identical arguments, you’ll be required to present with new or distinct arguments in response to an official trademark Office Action more effectively.

Request for Reconsideration

If you are unable to resolve a Final Office Action, you can choose from a variety of alternatives. You can first submit a request for Reconsideration in the event that you have new issues or evidence. You can also make an appeal before the Trademark Trial and Appeal Board (TTAB).

Notice of Appeal

In the event that the USPTO trademark examiner doesn’t make a favorable decision in reply to the appeal within six months of the date of the Final Office Action, the applicant must file a notice of appeal with TTAB before the date of six months of the date of the Final Office Action. If a decision has not been made on the appeal has not yet been made or a decision has not been made, the applicant can ask for the suspension of the appeal after filing an appeal brief with the Notice of Appeal. If not, the appeals brief must be filed within 60 days after the date of filing of the notice of Appeal.

It could be appropriate in certain circumstances to request suspension of the application when the resolution of a specific matter is contingent on the outcome of a third-party approval or application.

Best trademark paralegal for trademark office action response

Refiling the patent application after receiving final office action still doesn’t guarantees you the patent grant in future. So make every effort to get the patent grant without facing any office action. Even if you face it, then make sure you clear all the objections of examiner in first office action only.

As moving to the later stages of office action, and still assuming that you will get patent grant by meeting the objections, is nothing but waste of time and money effort. Thus, to help you meet all your office action response, you need to hire an office action patent paralegal. And we believe we “Patent Paralegal Force” can do it best for you.  

Our work force consists of trained and experienced patent experts who have in-depth knowledge of all the technical domains. Thus, taking our help will make you produce patent application with well written claims. Customer satisfaction is the priority for us, and hence. Our state-of-the-art tools help us to give the services you desire for. Read more about us here.

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