Office Actions

Office Action from the USPTO

You’ve worked hard to develop a business and to identify the business with a brand.  This brand has value to your business and is a valuable asset of your business.  It is important that you take all the necessary steps to ensure your asset is protected.  Failure to properly secure your trademark leaves your business vulnerable and other businesses could in fact copy or utilize your brand in their marketing and advertising efforts.  Allowing this to happen to your brand could significantly diminish the value of the goods or services you provide and have devastating consequences on your income potential and value of your business.

Don’t let this happen to you.  If you filed your trademark application and have received an office action from the USPTO you should take immediate steps to follow through with the application and ensure you are able to protect your business.

WARNING!  Failure to respond timely could result in your application being abandoned.  The USPTO has many lawyers who are well versed in the federal trademark laws.  You should seek the help of an experienced trademark lawyer who can help you fight to protect your trademark.  Remember, filing a trademark application is a legal action.  Trying to sort through the process without the help of an experienced lawyer could cost you a lot of time and money.

Our firm is able to review your trademark application, do the appropriate searches and help you make the best decision for your business on how to proceed with your application.  We understand how important a brand is when building a business. We’ve been there ourselves, and we want to help you.  We will do everything we can to make the process simple and easy for you.  We will work on the legal issues and make sure your deadlines are met allowing you the time to continue to focus on growing your business with the peace of mind knowing we are taking care of you and your brand.

Below you will find some frequently asked questions we receive.  If your questions are not answered, call us today.  The call is free and we can tell you how we can help.

Do I need to respond to the office action notice I received?
When the USPTO issues an office action item against your trademark application it is important you review the notice carefully and take appropriate steps to respond.  The list below is an example of the action items and a brief description.

 

Examiner’s Amendment:  An examiner’s amendment is written acknowledgment of a change made to an application.  Unless you disagree with the changes made by the examining attorney, you may not need to take any action.  However, if you disagree with the change made you may be able to dispute the change.

Priority Action:  A priority action indicates the examining attorney has identified a problem with your application and action is required, by you, to ensure your application is not abandoned.  Typically, you have six months to respond to a priority action.  You should review the notice and contact an attorney as soon as possible to help you correct the issue and ensure your application is not abandoned.

Office Action: There are two types of office actions:  Final and Non Final

Non Final Office Action notices are raising issues for the first time.  It is important you examine the document and the items the USPTO is asking you to comply with.  This is a critical time in your application process.  Be sure to read the notice carefully and take appropriate steps to ensure your application can continue to be processed.  If you have not already, you should consult with an experienced trademark lawyer.  You want the application you filed to be approved as close to your initial vision of the trademark you had.  Without proper action your application may be abandoned.

A Final Office Action is the most severe and indicates that the applicant has failed to respond to the requests or to comply with the requested changes from the previous office action notices.  You should consult with an attorney if you have received a Final Office Action Notice.  You may need to file an appeal with the Trademark Trial and Appeal Board.

Suspension Letter: There are many reasons you may receive a suspension letter.  An applicant is not required to respond to the suspension letters.  However, if you wish to continue to pursue your trademark application you should contact an experienced trademark lawyer to evaluate your options.

 

How long do I have to respond to my office action?
You typically have six (6) months to respond to an office action.  You should know that there are NO EXTENSIONS granted for responses to an office application.  If you fail to respond to an office action in a timely manner, your application will be considered abandoned.  It is imperative for you to review any notices you receive from the USPTO immediately and take action. You should review your letter with an attorney to ensure you can file a response in a timely manner and keep your application moving forward.

 

My trademark application is abandoned.  Now what?
Applications are typically abandoned for three reasons:  Failure to Respond, Failure to File a Statement of Use or because of an incomplete response.  Abandonment means the application is no longer pending and it cannot mature into a registered trademark.  As with all abandoned notices you should consult with a lawyer to discuss what actions can be done to revive your application.

 

Failure to Respond to Office Action:  If you fail to respond timely to an official office action notice, you will receive an official notice of abandonment.  You may be able to file a Petition to Revive, but you should consult with an experienced trademark lawyer and decide how to proceed.  Remember, filing a trademark application is a legal proceeding and the USPTO has numerous lawyers reviewing your application and looking to see if all the federal trademark laws have been satisfied.

 

Failing to File a Statement of Use: Statement of Use is a statement signed by the applicant explaining the purpose or use of the mark in commerce. With a statement of use, the owner must submit: (1) a filing fee of $100 per class of goods/services; and (2) one specimen showing use of the mark in commerce for each class of goods/services.

 

Abandoned because of an incomplete response:  This often happens when someone unintentionally delays responding to an office action requirement.  There may be recourses an experienced trademark attorney can discuss with you and help you review the status of your application.

 

How do I know the status of my application?
Once you file your trademark application you should regularly check the status of your application to ensure no action items have been filed against your application.  The time it takes for the USPTO to approve an application can be lengthy.  As an applicant you should be checking your application status every three to four weeks.  This is extremely important to prevent time lapses against your pending application should an office action be issued against your trademark application.

 

What happens if I don’t respond to my office action notice?
WARNING!   Failure to respond to an office action will cause your application to be abandoned.  An abandoned application will prevent your trademark from becoming registered.
Don’t delay acting on any type of notice you receive from the USPTO.  You have worked hard to define your business through your trademark and you deserve to protect it.  The USPTO office has many lawyers working to ensure that all trademarks fall under the federal laws for trademark filing.  You should have an experienced trademark lawyer working and fighting for your brand, too.

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