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.
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."
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).
A substantive Office Action includes a legal basis for denying registration (see image above). A substantive Office Action will cite statutes and case law. Responding to a substantive Office Action requires proper legal analysis of the Examining Attorney's position such as reviewing the cited statutes, reviewing the cases listed in the Office Action, and researching registrations on the federal registry.
A non-substantive Office Action identifies technical issues with a trademark application such as owner clarification, disclaimer requirement, or a request for an updated specimen. Responding to a non-substantive Office Action is not as straightforward as it may seem.
For example, a request for an updated specimen should be handled with care. The USPTO accepts specific specimens based on the trademark class selected in the trademark application. Responding it an Office Action with an incorrect specimen can result in denial of an application.
Note, an Office Action can be both substantive and non-substantive if an Examining Attorney identifies more than one issue with a trademark application.
A non-final Office Action raises a legal problem regarding an application for the first time. If a response satisfies each legal problem in the non-final Office Action and doesn’t raise any new problems, then the application will proceed toward registration. If a response doesn’t satisfy each problem and doesn’t raise any new problems, a final Office Action will be sent.
If a response raises a new problem, the Examining Attorney will send a new non-final Office Action to address the new problem and indicate any outstanding refusals and/or requirements previously raised.
A final Office Action raises a legal problem about an application for the last time. A final Office Action will only be issued after an Examining Attorney has raised all legal problems with an applicant at least once already. With a final Office Action comes the last opportunity to file a response during the application process. If a response satisfies each legal problem in the final Office Action, then the application will proceed toward registration. If it doesn’t, the applicant can either appeal to the TTAB or walk away from the trademark application (abandonment).
Common Office Actions
Requirement to disclaim a portion of a trademark: If an Examining Attorney determines that a specific term or design in your trademark is not registrable an applicant will be asked to provide a disclaimer. A disclaimer is a statement that a trademark owner does not claim exclusive rights to the specific term or design.
Specimen refusal: If an Examining Attorney determines that an applicant did not provide a specimen, or that problems exist with the specimen you provided. A specimen is a real-life sample of how an applicant is actually using a trademark with the goods or services identified in the application in the marketplace.
Section 2(d) “likelihood of confusion” refusal: If an Examining Attorney completes a search of the USPTO database of registered trademarks and determines that applicant's trademark is similar to one or more registered trademarks used with goods or services that are related to applicant's goods or services. Under these circumstances, a consumer is likely to be confused about the source of applicant's goods or services. Consumers could believe that applicant's goods or services come from the registration owner or vice versa.
Section 2(e)(1) “descriptiveness” refusal: If an Examining Attorney finds evidence showing that all the text or design in applicant's trademark merely describes some aspect of your goods or services.
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