What is an Office Action Notice?

May 9, 2018

So, you’ve filed your trademark application with the U.S. Patent and Trademark Office (USPTO) and are eagerly waiting to hear back that your trademark is officially registered, but instead you receive a letter back filled with a bunch of legalese that makes it hard to understand. Now you wonder if the whole process has been a big waste of time and money.

It’s all too common for a trademark application to hit a bump in the road, but in most cases, this doesn’t mean that the process is over. These communications are known as “office actions” and while it could be official denial, it is more often the case that the USPTO is seeking more information from you. Before we consider the different types of office actions, it might help to take a step back and look at the trademark process on a macro scale.

To start with, you or your lawyer would have filed a trademark application. After your application is sent to the USPTO, it is reviewed by an attorney (known as examining attorney) and if that attorney feels there is a problem with your application or which needs further clarification, they will issue what is known as an “office action.”

These office actions can reference any part of the trademark application, such as a failure to meet a technical requirement in the initial filing, requesting a more specific definition of products or services, or more.

While the door hasn’t been shut to your filing, you should realize that these office actions will delay your trademark application process. The typical process takes about eight months, but because office actions require a response from you (or your trademark attorney), that means that the application will not move forward until they have received a response from you. This also means that it is critical to respond to office actions as soon as possible in order to keep the ball moving forward and avoid further unnecessary delays. Typically, the deadline to respond is six months, though it may be shorter in some cases. This deadline cannot be extended and if you don’t respond to an office action by the deadline then the USPTO will consider your application to be abandoned, meaning that your trademark will not register, and you won’t get your application fee back.

Sometimes the problems identified in an office action are simple problems that are easy to address, but other times they may be more complex or require a more detailed response, such as providing legal arguments for how your trademark differs from another mark. In any case, it is important to address all of the objections raised by the examining attorney or you are likely to receive a final office action on the elements you neglected to address.

While it can be disappointing to receive an office action during the trademark process, it’s important to realize that it doesn’t necessarily mean your trademark can’t be registered. While you may worry about the cost, it can be much more efficient to hire a trademark attorney from the get-go or upon receiving an office action in order to get the help you need to make the process go smoothly and get your trademark officially registered.

Protecting your intellectual property is an important step for any business and avoiding costly mistakes or unnecessary delays allows you to focus on what you do best in your business.

This is why it is crucial that you consult with an experienced Austin trademark attorney in order to best protect your intellectual property. The team of intellectual property lawyers at Fears Nachawati can explain every aspect of the trademark process and help identify which other aspects of your business or idea are most in need of protection.

Don’t wait to legally protect your intellectual property. Schedule a free case evaluation with a member of our team by calling at (866) 705-7584, or by visiting the offices of Fears Nachawati located throughout the great state of Texas, including in Houston, Dallas, Austin, Fort Worth, and San Antonio.

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