How to Respond to an Office Action

    It is very common for trademark applicants to receive what is known as an office action from the United States Patent and Trademark Office. An office action, simply put, is when the examining attorney from the USPTO identifies flaws with the application or other substantive legal issues that need to be addressed prior to registration. While the flaws may merely be procedural or administrative, the more important office action matters pertain to substantive legal issues. If you receive an office action, you should provide it to your trademark attorney. However, in our experience, we have seen a lot of applicants that have attempted to file for the trademark without the help of a trademark attorney. In doing so, they receive the office action and try to respond to it on their own. This is a risky endeavor considering that if they are unable to overcome the office action, they're only remedy will be to appeal to the trademark trials and appeals board which can become far more costly. More over they may unintentionally state something that becomes public record that could hurt their trademark rights in the future.
    Therefore, most trademark lawyers recommend that anyone who receives an office action should seek out trademark council. While the USPTO examining attorney typically sets forth what the issue is, and even provides some of the underlying law that applies, an experienced trademark attorney can help craft the best arguments for the trademark applicant. For example, if their is a likelihood of confusion refusal as part of an office action, a trademark attorney can identify whether or not there truly is a liklihood of confusion or propose alternatives that could allow the application to proceed to regestration, such as a co-excistance agreement or consent agreement. Similarly, if there is a refusal due to mere discriptiveness in an office action, a trademark attorney may be able to advise on ways to overcome such refusal or otherwise help navigate registration on the suplimental register with hope of future registration on the principle regester. Regardless, an office action is a very important piece of the application process, one that must be answered within six months, and faliure to overcome may ultimatly lead to refusal of the application with the only option left being to appeal via the TTAB.
    You would be well served to speak to a trademark attorney if you receive an office action.