TRADEMARK OFFICE ACTION RESPONSE
COMMON OFFICE ACTION QUESTIONS AND ANSWERS
Looking for the top Phoenix Office Action Response Trademark Attorney? If your trademark application has been refused, we may be able to help. Our trademark office action response service typically involves entering our official appearance on a previously-filed trademark application by an applicant or low-cost trademark service. In many cases we are able to assist the applicant in getting the application approved by the USPTO.
About Trademark Office Actions
What is an office action?
An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself.
Some office actions require a written response to fix major legal problems (“substantive office actions”), others suggest calling or emailing the examining attorney to fix minor legal problems (“procedural office actions”), and others may require no response at all. Therefore, it is important to read your office action carefully to determine how and whether you need to respond.
In a procedural office action, an examining attorney may require that you fix legal problems with the application itself by making simple revisions, such as clarifying your goods or services.
In a substantive office action, an examining attorney may raise legal rejections, such as refusing your application because your chosen trademark is likely to be confused with an already registered trademark.
You must resolve all legal problems in the office action before the USPTO can register your trademark. In some cases, however, you may not be able to fix a requirement or a refusal. See our article called “Responding to common trademark office action refusals or requirements.”
What is the difference between a nonfinal office action and a final office action?
A nonfinal office action raises a legal problem about your application for the first time. You must respond to this letter within six months from the date it issues.
If your response satisfies each legal problem in the nonfinal office action and doesn’t raise any new problems, your application will proceed toward registration. If, however, your response raises a new problem, the examining attorney will send you a new nonfinal office action to address the new problem and indicate any outstanding refusals and/or requirements previously raised. Therefore, if your response doesn’t satisfy each problem and doesn’t raise any new problems, you will be sent a final office action.
A final office action raises a legal problem about your application for the last time. You’ll receive a final office action only after the examining attorney has raised all legal problems with you at least once already. When you receive a final office action, it’s your last opportunity to file a response during the application process.
What is the deadline for filing a timely response?
Generally, the USPTO must receive your response to an office action within six months from the date it issued for the response to be considered timely. However, some types of office actions have a shorter deadline, so read your office action carefully to determine the specific deadline for the response.
Deadlines for responding to office actions generally can’t be extended. Therefore, if you do file a response after the deadline, the application will be abandoned, your application fees will not be refunded, and your trademark will be abandoned.
Trademark office actions come in many forms. Some office actions are procedural, and some may be a substantive refusal of your trademark application. In any case, a proper response is necessary within 6 months of issuance by the USPTO. Because trademark office actions are time sensitive, contact us as soon as possible if you have received one and need assistance. Get in touch with us by filling out the Contact Form below.