Office Actions for trademark applications

Office Actions? What are they?

In Trademark 101 by Shannon Montgomery

After working with a few of my clients this past week I realized I had no information on my website about office actions, what they are or how they are handled. So, selfishly I decided that I would create some content around office actions and then maybe, I can point future clients to these articles when they get confused by my initial explanation.

Office actions are used by the USPTO in both Patent and Trademark applications. The term is used to describe what is essentially a letter from the attorney reviewing your application, with a request for additional information, maybe a change to your application, or something slightly more substantive.

Should you be worried?

The majority of trademark applications will receive office actions. Generally, the USPTO examining attorneys like things done a certain way and if your application was done by you or (sigh) by something like a LegalZoom, you likely won’t have filled in the application appropriately. The examining attorney may be seeking a different specimen showing how your mark is used in commerce, or perhaps they want a more definite description of the types of goods and services the mark is connected with. But, these types of actions are not necessarily something to be worried about.

The office action comes in the form of a somewhat confusing letter with lots of legalese that might make it unclear what the USPTO is actually looking for. This is a reason I suggest finding an attorney after you receive an office action so you know it is handled properly. But, if you can decipher the letter well enough to make the appropriate changes to your applications be sure you do so within six months as that is the timeframe in which you must answer.

But, sometimes it’s more substantive…

Unfortunately, not all office actions are an easy fix, and there are cases where I suggest you absolutely retain an attorney to answer on your behalf.

There are a few different substantive office actions but the most commonly seen are Section 2(d) and Section 2(e) office actions. A 2(d) refusal is based on a likelihood of confusion while a 2(e) refusal is based on descriptiveness.

I wrote about this in a previous post, the standard for registerability is not that the marks are identical but that they create a likelihood of confusion within the marketplace. If you are trying to register a mark that resembles an existing mark and is in a similar class of goods or services you may get a 2(d). The USPTO will issue a 2(d) office action if the mark is likely “to cause confusion, or to cause mistake, or to deceive.” The difficult part is that these are relatively subjective terms, and if filing without the proper search and legal analysis you can run into this issue easily.

A 2(e) office action is issued if the mark consists of “merely descriptive term or phrase” ie it is not arbitrary or fanciful. The office action explaining this issue to you will use terms like this:

  • The mark is merely descriptive or deceptively misdescriptive of the product or service
  • The mark is primarily geographically descriptive or misdescriptive
  • Includes a functional term describing the whole
  • The mark is primarily merely a surname

Does that sound confusing? The office action isn’t going to be any easier to understand.

These are not the only two substantive office actions. If your mark includes an individuals name or government insignias you will get an office action, or if the mark is seen as disparaging or scandalous, the USPTO will have something to say about that. And finally, there are things about a mark that needs to be disclaimed in the initial application, and if you fail to do this the USPTO will request that you make certain changes.

You do have options! 

Even when faced with a substantive office action you do have options to get the sought-after registration approval for your mark.

At this point, I really, really, suggest hiring an attorney to answer for you. The reason for this is two-fold. One, answering a substantive office action is akin to litigating. It is paper litigation for lack of a better term. And unless you have practiced law it is hard to understand how best to craft an argument that will win over the USPTO examining attorney. And two, the examining attorney is expecting a legal argument as to why your mark is not one of the above-listed things. This means case law to show precedent and past decisions is vital to overcoming a substantive office action. So, unless you are prepared to draft a well thought out and researched legal argument with proper citations and use of case law, find an attorney that can do it for you.

Final vs. Non-Final Office Actions

It is important to note one final thing. There are final and non-final office actions.

The non-final office action is the first notice given by the USPTO that there is an issue they need fixed. You have the chance to correct or amend or clarify what is bothering the USPTO. At this point, you still have the opportunity to present your argument as to why your mark is not confusingly similar or descriptive.

A final office action means that you failed to overcome the original issued raised in any previous office action. This does give you one final chance to respond and correct the issue. It is extremely important that your response is correct here, or your registration will be denied.

Wrapping up

Substantive office actions are the same as any non-substantive action in that you have six months to file an answer so don’t hesitate in taking action once you receive your letter.

Please note that although you might think to file your trademark application on your own or through a discounted service will save you money, as you can see the need for an experienced skilled trademark attorney could pop up in the middle of the application process.

Considering the technicalities, the strict deadlines, and the subjectivity with which the examining attorney reviews each application having an attorney on your side from the beginning will help in avoiding a denial of your application.

I hope this helped shed some light on office actions, and as always if you have questions feel free to email me directly at Shannon@montgomerypllc.com.

 

Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic