How to Respond To An Office Action
So, you submitted your trademark application to the United States Patent & Trademark Office (the “USPTO”) a few months ago and haven’t anything since.
Now there’s an email in your inbox with “Official USPTO Notice” in the subject line. You quickly open it to find out what it is.
Turns out it’s an Office Action.
What’s an Office Action?
An Office Action is a preliminary refusal of your trademark application.
It was issued by a lawyer who works for the USPTO called an Examining Attorney.
The Examining Attorney found one or more legal or procedural issues with your trademark application and issued the Office Action to let you know of them.
It’s a preliminary refusal because your trademark application will be rejected as filed, but it’s not necessarily the end of the conversation.
There are two main types of Office Actions: Non-Final & Final
What is a Non-Final Office Action?
A Non-Final Office Action is the first communication an Examining Attorney will send. It will outline the issues the Examining Attorney found.
You can respond by amending your application to comply with the Examining Attorney’s Office Action or arguing against the refusal.
What is a Final Office Action?
If you don’t respond to the Non-Final Office Action before the deadline or the Examining Attorney is not convinced by your arguments against their refusal, the Examining Attorney will issue a Final Office Action.
It’s an escalation from the Non-Final Office Action you received.
How Should I Respond to Office Action?
If you’ve received an Office Action, here’s what you should do:
1. Determine If the Office Action Is Non-Final or Final?
It’ll be on the top of the file. Since your options on how to respond depend on the type of Office Action.
Be sure to note if it’s Non-Final or Final, as that affects how you can respond.
2. Figure Out the Response Deadline.
You have three months for the Issue date listed on the Office Action to respond.
If you find Office Action too close to the deadline, you can request a one-month extension for $125.00 up to six times.
3. Find Out Why You Received an Office Action.
Before deciding how you want to respond, you need to understand what you’re responding to. You will do this by reading the rest of the Office Action.
In the Summary of Issues section, the Examining Attorney will list out the registered trademarks they believe would cause a likelihood of confusion, if any. As well as any procedural issues with your application.
4. Decide If You Want an Attorney to Handle It
If you don’t understand what the Office Action says, you should consult a trademark attorney.
Some issues could be resolved with a phone call; others will require a written rebuttal of the Examining Attorney’s analysis.
If you don’t feel comfortable preparing the response, it’s better to have someone do it for you.
5. If You Don’t, Prepare the Response Yourself
If you decide to do it yourself, be sure to respond to every issue raised in the Office Action and keep the tone professional in your communications.
The Examining Attorney is not there to antagonize you.
What Happens After I Respond to an Office Action?
After you respond the Examining Attorney will either approve your application for publication, or issue a Final Office Action.
If you’re approved for publication, you’ll proceed to the Publication, the next step in the trademark process.
If you receive a Final Office Action, repeat this analysis over again and decide how to proceed.
You have three options to respond to a Final Office Action:
Comply with the Examiner’s objections
File a Request for Consideration
Appeal to the Trademark Trial and Appeal Board
Key Takeaways
An Office Action is an initial refusal of your trademark application.
It was issued by an Examining Attorney, the USPTO employee in charge of approving your application.
There are two types of Office Actions: Non-Final and Final
The Examining Attorney will send a Non-Final Office Action first.
The Examining Attorney will send a Final Office Action if they did not receive a response to their Non-Final Office Action or they were not convinced by your response to the Non-Final Office Action.
To decide how to respond to an Office Action follow these steps:
Determine if the Office Action is Non-Final or Final
Figure out the Deadline
Read the Office Action
Decide If You Want an Attorney to Handle the Response
If Not, Prepare the Response Yourself.
After you respond, the Examining Attorney will either approve your application for publication or issue a Final Office Action.