by Traverse Legal, reviewed by Enrico Schaefer - November 11, 2011 - Uncategorized
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm representing trademark applicants, those with trademark registrations and those looking to enforce their trademark rights throughout the United States and the world.
Today, I will be answering the question, “how to respond to a USPTO office action.” Let’s first begin by identifying what a USPTO Office Action is. Once an applicant applies for trademark registration, an examining attorney is assigned to that particular trademark application. The examining attorney’s role is to identify any deficiencies with that application. These deficiencies can be small, such as the need to file an additional specimen showing use of the trademark in commerce, or they might be more substantial, such as refusing, initially, the trademark application from registration because it creates a likelihood of confusion with another existing application or registration. Regardless of the substance of the office action, the applicant needs to respond to that office action. If they applicant fails to respond to an office action, the application will be deemed dead. Put another way, the application will no longer be able to proceed to registration.
As part of this situation, I often get asked, “Do I need a trademark attorney to respond to the office action?” The short answer is no. However, it is advisable to have a trademark attorney, who has represented trademark applicants in front of the USPTO, respond to the office action. Since the USPTO has an examining attorney, doesn’t it make sense for you to also have an attorney representing your interests? The trademark attorney will be able to identify the specific deficiencies in the application, make arguments to overcome a likelihood of confusion refusal or even a descriptiveness refusal, and give you the best chance of getting your trademark registered, which is the whole point of you applying for that trademark registration to begin with.
So, the process usually goes as this. You apply for your trademark application, and within three-six months, an examining attorney gets assigned to that application and notifies you of any office action. You will receive an email that says office action and identifies your serial number for your trademark application. At that point, you would be well-served to contact a trademark attorney who has experience in these matters. That trademark attorney will be able to review the office action, respond to it and await any further communication from the USPTO. The USPTO examining attorney may simply adopt the arguments made by the trademark attorney, or they may file an additional office action. Regardless, that experienced trademark attorney will be able to advise you of your likelihood of a successful registration or options that may enable you to proceed in a different direction while still, ultimately, being able to protect your trademark or service mark.
So, ultimately, do not panic when you first get an office action as they are fairly common. However, do not jeopardize your position in the future by trying to respond in such a way that you do not know how the USPTO will ultimately view your application. You would not want to put in a response that precludes you from making an argument in the future or subjects you to such claims as trademark infringement from third parties.
So, this has been Brian Hall, answering your question how to respond to a USPTO office action.
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
