USPTO Office Actions
Receiving an office action from the USPTO can be intimidating. Getting it wrong can mean losing your trademark along with all the time and money you invested in getting it registered so far.
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Frequently Asked Questions
1. What is a non-substantive trademark office action?
A non-substantive trademark office action is not an outright refusal of registration. Most often, they only request small amendments or other revisions to your mark before registration can move forward. Common causes for non-substantive trademark office actions include improperly identified goods or services, as well as requests for further details on the trademark.
The United States Patent and Trademark Office (USPTO) might also contact you if you need to make any changes to the description of your trademark or if you need to add a disclaimer for part of the trademark. Hiring an experienced trademark attorney can help lower the chances that you’ll face a non-substantive trademark office action because of their deep understanding of the application process. You can learn more about the trademark application process by reading our Insight.
2. What is a substantive trademark office action?
Substantive trademark office actions, unlike non-substantive trademark office actions, come with a refusal to register your trademark, usually because of likelihood of confusion or mere descriptiveness. If your mark is refused on the grounds that it is merely descriptive, it’s probably because the mark is too general and only refers to an obvious quality or function of your goods or services. Likelihood of confusion, on the other hand, means that your mark closely resembles one that has already been registered.
If you still want to try to register your mark after receiving a substantive trademark office action, you’re going to want to enlist the help of a trademark attorney. This is because the response often requires a great deal of research and complex legal arguments, the extent of which depends on the examining attorney in charge of your mark. Of course, you can increase your chances of avoiding a substantive trademark office action by hiring a trademark attorney who can advise you on selecting a strong trademark from the start.