What To Do If You Receive An Office Action

Office actions are sent by the United States Patent and Trademark Office (USPTO). You may receive one of these in response to an application you filed for a trademark. The letter will come with the seal of the USPTO and the following things:

  • Application Number
  • Filing Date
  • Signatory
  • The Examiner’s Name
  • Office Action Summary

Following these things, there will be a written explanation of why a claim was rejected. And you would likely receive one of these several months after filing for your trademark.

It may take 3- 5 months for an examiner (an attorney) to review your application after you submit it. You will either move on to the next phase, publication, or you could receive an Office Action. Here are 2 reasons why you may receive one:

  • Technical Deficiencies
  • Substantive Issues

Having an experienced attorney is going to make this process easier. The goal is to not receive an office action letter. If you do, overcoming a technical deficiency is going to have a higher likelihood of success.

Technical Deficiency

A technical deficiency requires an adjustment to your application. The language describing your product may need to be altered. This is to protect both you and others. The way you word your application needs to be precise. This prevents you from infringing on other people’s marks, and it won’t allow others to copy yours.

Your mark may require a disclaimer. This happens when one part of your trademark is too generic, general, or even too descriptive. For example, if you were trying to get a trademark for “Sentry Furniture Store,” you might need a disclaimer. Why? Because you will not be able to own the phrase, “furniture store.” It’s already widely used.

Substantive Issues

You should give serious consideration to hiring an attorney before filing for a trademark. Having one to help you work through a substantive issue is even more important.

If this is the reason for your office action, there is a serious issue with your application—and the trademark itself. It could be too similar to an already registered trademark. Or the examining attorney at the USPTO may claim your trademark is too broad. This extends to it not being unique enough to be eligible for a trademark.

Regardless, your attorney can advise you on how to proceed..

Bashirah Martin, PLLC Attorney at Law

Applying for a trademark is a matter of precision and detailed planning. Drafting a proper application increases your chances of getting your mark registered. And you need to know how to respond when your trademark isn’t approved. Let Bashirah Martin, PLLC, Attorney at Law help you navigate this process. Contact us to schedule your consultation today.

Categories: Business