What is a USPTO Office Action?

An office action is a notification that your trademark application has been refused. Office actions are issued by the examining attorney at the USPTO who reviews your trademark application. It will state the reasons for the refusal and how to overcome these issues. Office actions can be substantive or non-substantive. They can also be final or non-final. If an office action is issued regarding your trademark application a response must be filed within 6 months in order to preserve the application. If a response is not filed in a timely manner the application will be abandoned.

What is a non-substantive Office Action?

A non-substantive office action is the less-complicated form of office action. These are requests by the examining attorney at the USPTO for additional information, clarification regarding an aspect of the trademark application, addition of a disclaimer regarding a portion of your proposed trademark or adjusting the scope of the identification of the goods or services related to your proposed trademark. Non-substantive office actions may also be issued for submitting an improper specimen and other basic procedural deficiencies. Many attorneys, including us, will include response to non-substantive office actions in the fees charged for your trademark application.

What is a substantive Office Action?

A substantive office action is a rejection that can be difficult or impossible to overcome. Substantive office actions are commonly issued on the grounds that the proposed trademark is likely to be confused with a previously registered trademark. Another common substantive office action refusal is that the proposed trademark is merely descriptive of the goods or services to which the trademark relates. Other substantive office actions include scandalous or offensive trademarks, trademarks that are primarily a surname, trademarks that make a false suggestion and other statutory grounds for refusal.

The best way to avoid receiving a substantive office action is to choose a trademark that is legally distinct and entitled to protection. Consulting a trademark attorney before filing your application can be very helpful for this purpose. At our firm, we start by conducting a clearance search on the proposed name, logo, or slogan. If the results of the search indicate that a proposed trademark would be difficult to register we may advise a particular filing strategy or choosing an alternative mark.

Do you include response to substantive office actions in the fees charged for preparing a trademark application?

No. Response to substantive office actions is outside of the scope of our basic trademark application services. However, if you receive a substantive office action we will review it free of charge and advise you regarding the additional fees associated with preparing a response and the likelihood that the response would be successful.

Can you respond to my Office Action even though your firm did not file our application?

Yes. Please contact us for more information.

 Thomas Law Firm PLLC | 175 Varick St | New York, NY 10014 | P: (212) 203-9975 | scott@thomaslawfirm.co