Trademark Office Actions

It is rare that a federal trademark application will be immediately granted after filing. Currently, it will be approximately 7-9 months from filing before formal review of a new trademark application will occur. At this point, you will like receive a communication from the United States Patent and Trademark Office (USPTO) are received (more information about the trademark process.)

During the substantive examination process, the USPTO will review your application and determine whether there are any grounds to reject the trademark application, or whether clarification is needed. An attorney at the USPTO, called an Examining Attorney, will prepare and send an Office Action. Most trademark applications will receive at least one Office Action, which can contain a number of issues that have to be addressed. Because most trademark applications receive at least one Office Action, do not despair if you receive one. Depending upon the rejection(s) you receive, there are legal and factual arguments that can be made to overcome these rejections. Many of arguments to rebut an Office Action include citations to case law before the USPTO.

There are many different rejections that your trademark application can receive. The Examining Attorneys at the USPTO rely upon the Trademark Manual of Examination Procedures (TMEP) for their review. There is an extensive section on various issues that should be examined for each trademark application- Chapter 1200. The most common rejections include similar trademarks, descriptive elements in a mark, and improper identification of goods and/or services. An example trademark office action is presented here, with identifying information removed (view sample trademark office action.)

Once a trademark Office Action is either mailed or emailed, you have 6 months to respond. If you do not respond within this deadline, your application will go abandoned. It is possible to respond late, however this will incur additional filing fees and require an explanation for your delay in responding.

It is possible to receive multiple Office Actions from the USPTO. Sometimes an explanation or argument is not immediately evident, and the Examining Attorney requires additional information. It is also possible that attachments or amendments included with a response are unclear. These first Office Actions are called "non-final Office Actions," and you have an opportunity to offer a response. The Examining Attorney will consider the response, and either allow the application to proceed, issue another non-final Office Action, or issue a Final Office Action.

Once you receive a Final Office Action, it is likely that the Examining Attorney will ultimately refuse registration of your trademark application. It is possible to respond further, however this response is called an Application for Reconsideration. Further significant evidence and legal arguments are provided in an attempt to convince the Examining Attorney to reverse position, and also to include further evidence if you application needs to be appealed before the USPTO.

If you would like additional trademark information, or need assistance responding to an Office Action, please contact us by filling out the form on this page, calling 858-350-3124 (San Diego) or toll free at 800-361-1961.

For additional trademark information resources, please visit our trademark resources page.