Trademark Office Action Response Services Quiz
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1.
Did you receive a Trademark office action electronically?
If your answer is yes,
Then, it is likely that you will be filing your response electronically as well. An Office Action is a letter in which an examining attorney presents for consideration the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney also will send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.
If your answer is no,
That is fine. We can file your response either electronically or via postal mail after preparing it through Patent Express. An Office Action is a letter in which an examining attorney sets forth the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney also will send an Office Action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.
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2.
Look in the front section of your Office Action. Was the mailing date of your Office Action within the last six months?
If your answer is yes,
Great. You must respond to an Office Action within 6 months from the date the office action is mailed. Patent Express can help you do this. If you fail to do so, your applications will be declared abandoned. Please note that examining attorneys do not have the discretion to extend the time for filing a response to an Office Action.
There are two types of office actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. A trademark Examiner at the USPTO will issue a non-final office action after reviewing the application for the first time. If a new issue arises after you respond to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It makes "final" any outstanding issues. Your only response to a final office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.
If your answer is no,
You are in a tough spot, but don’t worry! Here is why. Generally, you must respond to an Office Action within 6 months from the date the Office Action is mailed. However, since it appears that you may have failed to file in time, your application may be already declared abandoned. Patent Express can help you by re-filing your trademark application from scratch. You may lose rights to marks that you filed after your abandoned mark, but you still will be able to file your mark again. Email us at
customer.service@patentexpress.com to discuss more.
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3.
Do the Examiner's comments in the Office Action suggest a way to modify your filing class or description of mark?
If your answer is yes,
Good. Taking Accepting the Examiner’s comments and suggested amendments may be a quick way to have your trademark issued. However, think through whether that is the best move in terms of the breadth of your trademark protection. Patent Express will help you evaluate how to interpret the Examiner’s suggestions.
If your answer is no,
Ok, no problem. Patent Express will help you evaluate how to interpret the Trademark office action and respond in an appropriate way.
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4.
Do the Examiner’s comments in the Office Action cite a conflicting mark to the one you wish to protect?
If your answer is yes,
Ok, that’s fine. The Examiner will inform an applicant if the Trademark Register search yielded any conflicting marks. The Examiner also will write in the Office Action any substantive refusals to registration that arise (such as a likelihood of confusion, mere descriptiveness, etc.), as well as any procedural requirements. Patent Express will help you overcome these Office Action rejections.
If your answer is no,
That is probably a good thing! You only may have procedural issues related to your classification and description of mark. The Examiner will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The Examiner also will write in the Office Action any substantive refusals to registration that arise (such as a likelihood of confusion, mere descriptiveness, etc.), as well as any procedural requirements. If these things are not present, Patent Express will help you overcome procedural rejections as well to get your federal trademark issued quickly.
Disclaimer
The information provided in this site is not legal advice, but general information on legal issues commonly encountered. Though started by attorneys, Patent Express is not a law firm and is not a substitute for an attorney or law firm. Patent Express cannot provide legal advice and can only provide self-help services at your specific direction. Please note that your access to and use of PatentExpress.com is subject to additional terms and conditions.