When it comes to responding to a United States Patent and Trademark Office (USPTO) Office Action, at first glance it’s easy to become intimidated. However, it is like many other processes: step by step and in the right sequence, addressing only what needs to be addressed.
Being informed about terms and the reasons for the Office Action will bring you powerful knowledge so you’ll spend your time and energy efficiently and effectively instead of being confused, spinning your wheels, or providing wrong information in the wrong place.
Filing a trademark application begins a legal proceeding. A USPTO trademark examining attorney may issue an Office Action -- governed by specific U.S. federal laws and rules -- that indicates there are legal issues about your trademark application. There are a variety of reasons for the refusal. They may be refusals for complicated legal reasons, or to resolve minor items that can sometimes be addressed with simple amendments or additional information. Don’t be intimated. Be informed and know where to go to find more information to help you respond to an Office Action.
Here are ten tips you’ll find helpful as you navigate how to respond to your Office Action.
1) Respond as quickly as possible.
You’re typically provided 6 months to respond before your application will be considered abandoned. If you’re too close to the 6-month deadline and want an extension, the examining attorney may not grant it to you, so responding sooner is better than later.
2) Consider whether this is a response to a final Office Action, and respond appropriately.
If you’re responding to a final Office Action, consider filing both (1) an appeal to the Trademark Trial and Appeal Board (TTAB) and (2) a direct response to the examining attorney, called a “request for reconsideration”. Both should be filed as timely as possible. If you’re are responding to a non-final Office Action, you can just file a direct response to the examining attorney. To file a direct response to the examining attorney, use the Trademark Electronic Application System (TEAS). To file an appeal, use the Electronic System for Trademark Trials and Appeals (ESTTA).
3) Respond by a call or email, when appropriate.
For easier matters like disclaimers or amending goods/services, consider calling or emailing the examining attorney with your response. If you email, the email will be uploaded as a part of your application record, accessible to the public on the USPTO website.
4) Be familiar with the USPTO’s rules and procedures.
Check out the USPTO’s online manuals and videos for background so you understand the rules and principles for trademark applications. To search listings of acceptable identifications of goods or services, use the Trademark ID Manual (ID Manual). You can also consult the Trademark Manual of Examining Procedure (TMEP) for insights into particular issues, like acceptable specimens for services or how clear and detailed an identification of goods or services needs to be.
5) Know who’s who and when to make contact.
Near the end of the Office Action, you’ll find the name and contact information of the examining attorney who reviewed your application. The examining attorney is most familiar with your application and the best person for any of your questions about your Office Action.
Only after you’ve read through the Office Action and have very specific questions should you call or email the examining attorney. If you leave a voicemail, wait at least one business day for a response before you reach out again. Of course, if the examining attorney is out for an extended period, that would likely be communicated in the voicemail greeting, and an auto reply email message should include contact information for his/her supervisor. Only contact an examining attorney's supervisor if you have an imminent deadline and cannot reach the examining attorney and remember the supervisor won’t be familiar with your application or issues so be patient and allow time to review your application. Also, the supervisor will generally not rule on a substantive issue. If you think there’s been an error during the examination that can’t be resolved through further discussion with the examining attorney, it may be suitable to contact the supervisor.
Other people to know are the TEAS Staff who you work with if you have technical issues using the online response form in TEAS (TEAS@uspto.gov) and Trademark Assistance Center (TAC) Staff for general information about the trademark application process (1-800-786-9199 or email TrademarkAssistanceCenter@uspto.gov.
6) Be mindful of your response content.
Provide your own evidence to support your interpretation or analysis of the situation. Explain any issues with the examining attorney’s evidence and/or analysis. You can also share your own knowledge or third-party sources of the particular industry or field and explain the field or marketplace for your goods/services when arguing against any refusals or requirements. Submit supplemental resources like brochures, printouts of webpages, catalogs, documentation and make specific, fact-based points about why the examining attorney should withdraw the refusal. Essentially, include any helpful evidence that supports your argument.
7) Be careful how you choose to identify and describe about your goods and services.
One of the most common issues with applications is when the description of the goods and services with which your mark is or will be used is unclear, indefinite, and/or too broad. This issue can lead to other problems with your application like fees, dates of use, and specimens. Review suggestions in the Office Action to amend or revise your identification of goods/services. If the proposed suggestions are not accurate, review the examining attorney’s reasons why your identification is not acceptable and then use the USPTO’s online ID Manual, using synonyms for your goods/services when searching the ID Manual for accurate and acceptable wording. Use plain and non-technical language instead of industry jargon. Be specific, clear, accurate, concise, and use terminology that the average person will generally understand to help the USPTO classify your goods/services properly.
8) Understand the requirement “disclaimer”, if applicable, and know how to learn more.
If there is a requirement to “disclaim” a portion of your mark, that means that you do not claim exclusive rights to a particular term(s) and/or design element(s) in your mark. Disclaimers are generally for terms and/or designs that are not registrable matter (such as descriptive wording, e.g., in the mark BOB’S CAFÉ for restaurant services, a disclaimer would be required for CAFÉ because it is descriptive, if not generic, for restaurant services). A disclaimer does not change how your mark appears. Specific guidance for how to submit a disclaimer using TEAS is available online.
9) Understand Section 2(d) “likelihood of confusion” refusal, if applicable.
The USPTO issues this refusal when the examining attorney finds one or more already-registered trademarks in which the mark and goods/services are similar to yours, generally in appearance, meaning, sound, or overall commercial impression. The marks do not have to be identical. In your response, you may want to explain why you think the marks differ.
You can also check the status of the registered marks cited against your mark to see if they are still “live”. If they are no longer live, let the examining attorney know. Use the Trademark Status and Document Retrieval System to check the status by using the registration number.
You can also negotiate an agreement from the registration owner in which the registered owner consents to your use and registration of your mark and agrees that no likelihood of confusion exists. This is a legal document that will place affirmative duties upon you and the other party, so you may wish to discuss this with an attorney experienced in trademark law.
10) Understand Section 2(e) “descriptiveness” refusal, if applicable.
The examining attorney may find evidence showing that all the wording in the mark (and/or the design element) merely describes some aspect of the goods/services (for example, “creamy” for yogurt, or “New York Bagels” for bagels made in New York). The reason for the refusal is that, generally, businesses and competitors need to be free to use descriptive language when characterizing their own goods/services to the public. You may want to submit arguments and evidence as to why the wording and/or design in your mark does not describe your goods/services.
If there is some descriptiveness issue that is valid, you may still be able to register your mark by amending your application to claim “acquired distinctiveness under Section 2(f)” or by amending your application from the Principal Register to the Supplemental Register. If your mark is not only descriptive, but also generic for the goods/services, then your mark may not be registered under any circumstances. Examples of generic marks include “bicycle” for bicycles or retail bicycle stores, “milk” for a dairy-based beverage, or “foot-long” for foot-long sandwiches.