Trademark Law: What is a Non-Final Office Action?

The United States Patent and Trademark Office (USPTO) explains that an office action is “an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself.” Office actions are divided into two broad categories: 1) Non-final and 2) Final. It is crucial that you know the difference. Non-final office actions come first. In this article, our Florida trademark office action attorney explains the key points to understand about non-final office actions, including your rights and your options.

What is a Non-Final Office Action for a Trademark Application? 

Simply described, a non-final office action is a formal response from the USPTO for identifying legal or procedural issues with a trademark application. It is called “non-final” because it does not represent the USPTO’s last word on your application. Instead, it provides an opportunity for the applicant to address the agency’s concerns before a final decision is made. Notably, non-final Office Actions are relatively common in the trademark process.

 Know Your Rights: Responding to a Non-Final Office Action 

As a trademark applicant, you have important legal rights. Most notably, you have the right to respond to a non-final office action. Here are key points that you should be aware of:

• You Have Three Months to Respond: You must submit your response within three months of the mailing date, or your application will be deemed abandoned. (Note: you can pay for a three month extension of time, providing you with up to six months overall to respond).
• You Can Revise and Clarify: You are allowed to amend your application, revise descriptions, and submit arguments or evidence to support your position.
• You Can Work with a Trademark Attorney: A trademark lawyer can help craft a persuasive response, identify overlooked legal arguments, and avoid common pitfalls.
• You May Appeal in the Future: If the USPTO ultimately issues a final refusal, you can appeal that decision to the Trademark Trial and Appeal Board (TTAB).

The Big Point to Remember: You Must Resolve All Relevant Issues 

If you received a non-final office action, your trademark application is not—at least at the current time—on the path to getting approved. Indeed, you must resolve all legal problems in the office action before your trademark will be registered by the USPTO. Partial or incomplete responses are not sufficient. If any objections remain unaddressed or inadequately handled, your application could face a final refusal. Responding to a non-final office action is both a challenge and an opportunity. Do not go it alone: Consult with a top Florida trademark lawyer as soon as possible after receiving a non-final office action.

Consult With Our Florida Trademark Office Action Lawyer for Immediate Help

At Perkins Law — Brand Protection, our Florida trademark attorney has the skills and experience to handle office actions. If you have any questions about an office action, please do not hesitate to contact us today for a fully confidential, case review. With an office in Boca Raton, our firm provides trademark law representation throughout all of Southeastern Florida and nationwide.

Source:

uspto.gov/trademarks/maintain/responding-office-actions