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Office Action Response

THE PHOENIX TRADEMARK ATTORNEY

 

TOP TRADEMARK OFFICE ACTION RESPONSE ATTORNEY

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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 are other common types of office actions?

Besides nonfinal and final office actions, an examining attorney can issue other types of office actions. Some require a response and others don’t. Before responding, check the title of the office action to see which type you received and whether a response is required. The common types of office actions are described below.

 

Examiner’s amendment

An examiner’s amendment confirms in writing a change to your application authorized by phone or email. Changes to your application can be authorized by you, your attorney, or another person who can sign contracts for you and who has authority to legally bind you.

Generally, examiner’s amendments do not require responses. They are typically issued for minor legal problems with your application that can be resolved by phone or email and are used to move your application toward registration faster.

 

Priority action

Priority actions are typically issued when an examining attorney believes the legal problems can be resolved in writing by the applicant once the problems are discussed by phone or email. They are used to move your application toward registration faster.

In other words, a priority action confirms in writing a discussion you had with the examining attorney by phone or email about the legal problems with your application. It includes explanations about legal problems with your application and, if possible, how to fix them. You must respond to a priority action within six months from the date it issues.

 

Suspension letter

A suspension letter issues when your application is put on hold while the examining attorney waits for something to happen outside the examination process. You may file a response to a suspension letter, but you are not required to.

Although the USPTO reviews suspended applications every six months to determine whether suspension is still appropriate, you can notify the examining attorney at any time if you think suspension is no longer necessary. For example, if the USPTO suspended your application because of a conflicting trademark in an earlier-filed application and you check the Trademark Status and Document Retrieval (TSDR) system and find that the other application was abandoned, you can call or email the examining attorney and request your application be removed from suspension.

 

Suspension inquiry

A suspension inquiry requires you to provide information about why your application was initially suspended so the USPTO can determine if it should remain suspended. Typically, the examining attorney will issue a suspension inquiry only after your application has been suspended for six months or more. You must respond to this inquiry within six months of when it issues.

 

Notice of incomplete response

A notice of incomplete response generally issues when the USPTO receives a response to an office action that does not appear to be signed by someone with legal authority to sign it. You must submit a properly signed response either within 30 days from the date the notice issues, or within the time remaining in the six-month response period. The notice will specify the deadline, so read it carefully since, if you file a response after the deadline, the application will be abandoned.

 

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 not register.

 

Office Action ResponseTrademark 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, please contact us as soon as possible if you have received one and need assistance.

 

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