October 21st, 2024

What is a Trademark Office Action and How to Handle It?

Hello Reader,

I hope you’re doing well! I wanted to take a moment to explain something that sometimes surprises trademark applicants—the Trademark Office Action. If you’ve received one, don’t worry—it's just part of the process.

What exactly is a Trademark Office Action?
An Office Action is a letter from the USPTO outlining issues with your trademark application. It could be something minor, like clarifying details, or more significant, such as a potential conflict with another trademark. Essentially, it’s the examiner’s way of letting us know what needs to be addressed before your mark can move forward.

There are two main types of Office Actions:

Non-Substantive (Administrative) – This is usually easier to handle and involves fixing small details, like descriptions or classifications. Once we correct it, we can move forward.
Substantive – This type of Office Action can involve more complex issues, such as the likelihood of confusion with another trademark or concerns about the mark being too descriptive. In some cases, these issues can be resolved with a well-crafted response, but there are situations where the chance of overcoming the refusal is low, or the application may not have been properly prepared. If that’s the case, it may be better to abandon the application and explore filing a new trademark that stands a stronger chance.

What happens next?
The response time for most U.S. trademark applications has changed. You now have 3 months to respond. If you need more time, we can request an additional 3-month extension, but that comes with an extra fee.

Rest assured, we’ll help you navigate this and ensure your application stays on track. If you’d like to go over the details of your Office Action or have any questions, feel free to reach out—we’re here to make the process as smooth and stress-free as possible.

Keep Your Brand Safe and Protected,
J.J. Lee and the Trademark Lawyer Law Firm Team!

PS. Contact us to mark sure your business is protected!

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What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9^th and 10^th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.