Common Misconceptions About Trademark Office Actions
A trademark office action is an office notice from the United States Patent and Trademark Office (USPTO) that explains a problem, legal or procedural, with an application. There are a number of misconceptions about the process for office actions. At Perkins Law — Brand Protection, we have extensive experience with trademark office actions. In this article, you will find an overview of some of the most common myths about trademark office actions.
Misconception #1: An Office Action Means Your Trademark Application Was Denied
First and foremost, it is important to debunk one of the most common misconceptions: An office action is not a denial. Receiving an office action does not necessarily mean that the USPTO has rejected your trademark application permanently. A nonfinal office action identifies one or more issues that must be addressed before the application can proceed. Depending on the issue, you may still be able to overcome the issue by updating your application. An experienced trademark law attorney in Florida can review the documentation you received from USPTO and help you determine the best course of action.
Misconception #2: All Trademark Office Actions are Basically the Same
Not true. Office actions can raise dramatically different issues. Indeed, some involve relatively straightforward procedural requirements. For example, an examining attorney may simply want some clarification of goods or services or require a disclaimer of descriptive wording. Other office actions raise substantive grounds for refusing registration, including likelihood of confusion, mere descriptiveness, or failure of the proposed mark to function as a trademark. The specific reason why you received an office action from the USPTO always matters.
Misconception #3: You Can Simply Explain Why You Disagree With the USPTO
A successful response to a substantive office action generally requires more than telling the examining attorney that the applicant disagrees. Trademark refusals arise under specific provisions of the Lanham Act and must be addressed with careful reference to the relevant law. If you received an office action from the USPTO, a Florida IP lawyer can help you develop a response.
Misconception #4: There is No Urgency Because the Application is Already Pending
An office action carries a firm response deadline. For most U.S. trademark applications, the USPTO must receive a response within three months of the office action’s issue date. An applicant generally may purchase one three-month extension, provided the extension request itself is timely filed. A proactive approach is a must. The sooner you start the process of responding to an office action, the better positioned that you will be to overcome any issues with your initial application.
Contact Our Florida Trademark Office Action Lawyer Today
At Perkins Law — Brand Protection, our Florida intellectual property lawyer has the knowledge, skills, and experience to handle trademark office actions. If you have any questions about trademark office actions, please do not hesitate to contact us today for a completely confidential consultation. We handle trademark office actions throughout South Florida, including in Broward County, Palm Beach County, and Miami-Dade County.
Source:
law.cornell.edu/wex/lanham_act
