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Understanding Trademark Office Actions


An Office Action is often mistakenly viewed as a friendly informal letter when in fact it is an informal legal brief that should be analyzed and responded to with care.


  1. What is an Office Action

  2. Who Authors an Office Action

  3. Types of Office Actions

  4. Common Office Actions


What is an Office Action


The United States Patent and Trademark Office (USPTO) describes an Office Action as "[a]n 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."

Trademark Office Action issued by the United States Patent and Trademark Office
Example of a substantive non-final office action

However, an Office Action is more than a simple letter and should be viewed as an informal legal brief.


Office Actions cite federal statutes, case law, and USPTO examination procedures creating a document that is difficult for non-attorneys to understand.

Further, an Office Action may lay the legal foundation for denying registration of a trademark, and is the first step in the process of denying the registration of a trademark.



Who Authors an Office Action


Trademark applications are assigned to and reviewed by an Examining Attorney. If an Examining Attorney identifies an issue with a trademark application, then the Examining Attorney will issue an Office Action. Examining Attorneys are skilled and knowledgeable trademark attorneys.


The Examining Attorney's role is to protect trademarks that are already registered. The Examining Attorney is not there to help new trademark applicants. Think of an Examining Attorney as the civil version of a prosecutor in criminal court. A prosecutor's role is to represent the interest of the state. An Examining Attorney's role is to represent the interest of registered trademark owners.


If the Examining Attorney denies registration of a trademark and the case moves into civil litigation, then the Examining Attorney will be the trademark applicant's opposing counsel. The Examining Attorney will draft an appeal brief and represent the USPTO before the Trademark Trial and Appeal Board (TTAB). At trial, the Examining Attorney will cite statutes and case law for reasons to deny registration.


Types of Office Actions


Office Actions vary based on substance (substantive or non-substantive) and finality (non- final or final).


Substantive


A subst