I Just Got an Office Action from the USPTO—What Should I Do Now?

A trademark is a great way to protect a brand—but, unfortunately, getting a trademark application approved can be more challenging than many people realize. According to the United States Patent and Trademark Office (USPTO), slightly more than half of initial applications are approved. The other trademark applications will receive an “office action”—which is broadly defined as an office letter that indicates some legal or procedural issues with your trademark application. Here, our Florida trademark office action attorney provides an overview of your rights and your options if you receive an office action from the USPTO.

Step #1: Carefully Read the Entire Office Action Letter 

To start, you need to know exactly what the USPTO is telling you. It is important to carefully read and review the letter. An office action from the USPTO can be non-final or final. It will outline the specific reasons for the refusal or requirements for clarification. These could include “likelihood of confusion,” descriptiveness, or procedural issues like missing information.

 Note: Do not panic. Many office actions are common and can be overcome. Pay attention to deadlines. You typically have three months to respond and can get a three month extension of time for an additional fee. Reading thoroughly ensures you fully understand what is being asked before deciding upon a response.

 Step #2: You Should Identify Whether the Issue is Substantive or Procedural 

Office actions generally raise either substantive or procedural issues—or both. Substantive issues—for example, a “likelihood of confusion” with another registered trademark or descriptiveness—are usually more complex to deal with. With some exceptions, procedural issues are often less complicated. They may simply be about (alleged) missing information. Remember, Trademark applicants typically have three months from the mailing date of the office action to file a response. Notably, the timing matters in these cases: Missing this deadline will result in abandonment of your application unless it is revived within sixty days of the Notice of Abandonment.

 Step #3: Prepare a Strategic Response 

Once you understand the nature of the office action, it is time to prepare your response. Your reply must directly address each issue raised by the USPTO. For procedural matters, this may involve submitting corrected forms or revised descriptions. For substantive issues, such as likelihood of confusion, you may need to craft legal arguments, cite case law, or submit evidence. Every point must be answered thoroughly. Incomplete or inadequate responses could lead to a refusal of your application. You do not have to figure this issue out on your own: A top-rated Florida trademark lawyer with experience handling office actions can help.

 Speak to Our Florida Trademark Office Action Attorney Today

At Perkins Law — Brand Protection, our trademark lawyer has the skills and the experience to handle office actions. If you receive a trademark office action from the USPTO, we are here to help. Contact us today for a fully confidential, initial consultation. With an office in Boca Raton, we handle trademark office actions nationwide – that is, throughout all of South Florida, including in West Palm Beach, Miami, Fort Lauderdale, Boca Raton, and Coral Gables and beyond.

Source:

uspto.gov/dashboard/trademarks/