What is a Non-Final Trademark Office Action?

As explained by the United States Patent and Trademark Office (USPTO), a trademark office action is an official letter from the USPTO that explains the problems with a trademark application. Office actions are split into two broad categories:

• Non-final; and
• Final.

While getting a non-final office action from the USPTO can be frustrating, it is important to know that options are still available. A proactive approach is a must. Here, our Florida trademark office action attorney provides a guide to non-final office actions.

Trademark Law: Your Guide to Non-Final Office Actions

What They Are

A trademark office action is a refusal/objection of a trademark application. It comes after an examination by the USPTO. A key point to remember with non-final trademark office actions is that it is an initial objection. Among other things, it will identify specific issues that prevent immediate registration. A non-final Office Action is not a denial. While it means that your trademark application is currently not on the path for approval, it is an opportunity to respond and address the issues raised by the trademark examiner.

Note: Applicants have three (3) months  to respond to a non-final office action and may request one (1) three month extension of time for an additional fee. If a response is not timely filed, an applicant risks abandonment of the application. 

Why They are Issued

Non-final trademark office actions are issued because there is some type of (alleged) issue with your application for registration. The most frequent basis for a non-final Office Action is a potential conflict with an existing registered trademark or an already pending trademark. The examining official must assess whether the marks are similar in appearance, sound, or meaning and whether the goods or services are related enough to cause consumer confusion. Other common issues that can lead to a non-final trademark office action include the alleged failure to function as a trademark and the alleged use of generic or merely descriptive terms. Ultimately, you need to carefully review the notice to determine exactly what the USPTO believes is the issue.

What You Can Do

You can and should respond to a non-final trademark office action. In fact, the USPTO encourages applicants to do so. A thorough, well-drafted response is essential. You need to figure out why the USPTO believes there are issues with your trademark and respond accordingly. You may submit legal arguments, amendments, and/or supplemental evidence. For substantive refusals, such as likelihood of confusion or descriptiveness, persuasive legal reasoning supported with  case law can be decisive. For non-substantive refusals (procedural defects), the non-final office action can often be corrected through an amendment. The goal is to resolve all outstanding issues. A top-rated trademark lawyer can help you draft the an effective, comprehensive response.

We Have Extensive Experience With Trademark Office Actions in South Florida

At Perkins Law — Brand Protection, our Florida intellectual property lawyer has extensive experience with non-final office actions. If you have any questions about your rights or your options, please do not hesitate to contact us today. With an office in Boca Raton, we handle trademark office actions throughout Southeast Florida, including in Broward County, Palm Beach County, and Miami-Dade County.

Source:

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