How To Respond to Your Office Action
1. Read. An Office Action is a letter, received via email or postal mail, issued by an Examiner for the United States Patent and Trademark Office. The letter will let you know if the examination of the USPTO Trademark Register has yielded any conflicting trademarks, whether any substantive reasons may prevent your registration, or whether there are any procedural requirements to be completed.
2. Reason. Consider what the trademark Examiner has requested. If it is merely procedural information, you may be able to simply accept changes recommended by the Examiner. If a substantive argument is required, you will need to provide reasons why the Examiner should allow your trademark registration. To do this, it may help to remember that a trademark protects goods or services that come from your brand, from being confused with goods or services provided by someone else. Using this knowledge as a foundation, you may need to convince the Examiner that consumers of your goods or services will not mistake them from those of your competitor. In your argument, you may want to address:
- Any similarity between your trademark and any other; and
- Any similarity between your goods or services and the competitor's goods or services
- Whether the trademarks cited have the same or similar sound, appearance, meaning or commercial impression.
- Whether customers of your goods or services might be likely to encounter the competing trademark in the same setting.
- Whether any consent agreement could exist between you and the owner of the previously registered trademark.
3. Respond. Write your response carefully addressing each of the Examiner's cited concerns. The best responses to Office Actions will include arguments supported by evidence that does not limit the scope of your goods or services any more than would be required to receive registration. If you find you have difficulty in constructing your response, Trademarkia can help. See below.
4. Review. Re-read your Office Action letter to ensure you have responded to all issues addressed by the trademark Examiner. There are two types of Office Actions: non-final and final. A non-final Office Action is a letter that raises new issues and usually comes three months after a trademark application has been filed. A final Office Action will be issued to make final any issues not addressed by your Office Action response. Your only response to a final office action is to comply with any requirements or to appeal your case to the Trademark Trial and Appeal Board.
5. Reply. Responses to Office Actions must be received within 6 months of the mailing date printed on the Office Action document. There are no extensions to this deadline. Trademark Examiners have no discretion to extend the time period for filing. Remember, if you do not submit a timely response, your application will be abandoned.