What is a Trademark Office Action?

What is a Trademark Office Action?

After filing your initial application, your trademark is assigned to one of the USPTO’s Examining Attorneys. Your Examining attorney is in charge of evaluating your Trademark and ensuring that it meets the USPTO’s rigorous standards. If they have questions or other issues with your proposed Trademark, then they’ll issue what is known as an “Office Action.”  

What is an Office Action?

An Office Action is issued when your Examining Attorney encounters a problem with your Trademark. Some are simple requests for information that can be easily satisfied, while other Office Actions — commonly known as Substantive Office Actions — usually require a lawyer’s guidance to sufficiently respond to. More often than not, an Office Action isn’t an outright rejection, although your application will be abandoned if you fail to respond within the given six-month time frame. 

Non-Substantive Office Actions

Non-Substantive Office Actions mostly concern technical difficulties, missing information, or other procedural errors made during the Trademark application process. They are much easier to respond to when compared to Substantive Office Actions, and you might not even need an attorney’s assistance to do so. Common issues raised by Non-Substantive Office Action include: 

  • Misidentified Goods or Services – The USPTO uses a highly specific alphanumeric system to classify goods and services. It can be complicated for first time users, and if you select the wrong option, you’ll be asked to correct it. 
  • Disclaimers for Descriptive or Generic Words – If your Trademark includes any generic or descriptive terminology, the USPTO asks that you provide a disclaimer stating that the applicant makes no exclusive claims to those specific terms. 
  • Inadequate Specimens – A specimen is a real world example of your Trademark as used in commerce. If you fail to provide an accurate one, the USPTO will request another. 

Substantive Office Actions

A Substantive Office Action, on the other hand, is a significantly more difficult hurdle to clear, but not necessarily insurmountable with the right law firm’s help. Unlike their Non-Substantive cousins, Substantive Office Actions focus on the actual content of the Trademark and whether or not it meets the USPTO’s specifications. They’re usually issued for one of two reasons: because the proposed Trademark is “merely descriptive” of the good or service involved, or because it’s “confusingly similar” to one that’s already been registered.

  • Merely Descriptive – Trademarks rejected on this basis do little more than describe the product or service that they’re associated with. 
  • Confusingly Similar – Confusingly similar marks are, as the name implies, proposed Trademarks that are identical or too similar to one already registered with the USPTO. It doesn’t have to be an exact match — the Examining Attorney just has to find that the average consumer could be reasonably confused by the proposed mark.

How Can I Reduce the Likelihood That My Trademark Will Face an Office Action?

While not a guarantee, the best way to reduce the likelihood that your Federal Trademark application will face an Office Action is to hire an attorney to handle the Trademark application process for you. A lawyer will know how to check the availability of your Trademark, how to correctly fill out and file an application, and how to head off many potential issues that could cause an Examining Attorney to send out an Office Action.

FL Patel Law PLLC has helped entrepreneurs and businesses across Florida register their Trademarks, and we’ve also helped a fair share respond to their own Office Actions. Let us help with yours today.

About Us

FL Patel Law PLLC is a boutique business law firm dedicated to entrepreneurs and companies.

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