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Understanding Office Actions: A Guide for Trademark Applicants

Once you’ve applied for a trademark with the United States Patent and Trademark Office (“USPTO”), it will be months, if not longer, before you receive word that your application has been reviewed. So, when you receive notice from the USPTO that there’s an issue with your application, commonly known as an “Office Action,” it might seem disheartening, in all that waiting has been for naught.

An Office Action is an official letter from the USPTO Examining Attorney that states issues with your application that need to be addressed before your trademark can proceed to registration. If/when you receive an Office Action, here’s what you need to know and do.

1. Determine the Type of Office Action
There are two primary types of Office Actions: non-final and final.

1. A non-final Office Action raises concerns or objections about your application that can still be corrected or addressed. You will most likely receive a non-final Office Action first, and you will have an opportunity to amend your application or address any concerns that the USPTO Examining Attorney has raised.
2. A final Office Action means that the USPTO Examining Attorney was not satisfied with your responses to a prior non-final Office Action. Depending on the nature of the Office Action, you might receive multiple non-final Office Actions before the USPTO Examining Attorney sends the final Office Action. Once you receive a final Office Action, you will need to address all concerns raised by the USPTO Examining Attorney to their satisfaction, or risk a rejection of your application. That being said, if you do receive a final refusal from the USPTO, you do have the right to appeal to the Trademark Trial and Appeal Board.

2. Determine the Reasons for the Office Action
The Office Action will contain the reasons for the refusal in bullet point form, with each refusal being elaborated upon further down the letter.

• Likelihood of Confusion: This will be where the USPTO Examining Attorney might feel that your mark is too similar to one that is already registered. Trademarks are marketing materials, and the purpose of registration is to protect one’s brand, so the USPTO is extremely conscious of a risk of confusion in the marketplace.
• Descriptiveness: Your mark may be considered too descriptive of the goods or services offered. For example, if you made green shirts and you attempted to apply for the word mark of “The Green Shirt Company,” it would be refused as the name clearly states the product you sell. That being said, a company making green shirts that wanted to register the word mark “The Growling Tiger’s Shirt Company,” you’d have a better chance of success, so long as your shirts didn’t incorporate a growling tiger in the design.
• Specimen Issues: At some point prior to your registration, you will need to provide a specimen that shows you are using your mark in commerce. The USPTO might determine that the specimen you’ve provided is insufficient for reasons such as you haven’t showed how the mark is being used in commerce or the mark does not align with your applied class(es).
• Disclaimer Requirement: These Office Actions stem from the inclusion of a generic or descriptive portion within your mark. Going back to the example earlier, in an application for “The Growling Tiger’s Shirt Company,” the USPTO might require you to disclaim that you aren’t claiming exclusive ownership of the “Shirt Company” portion of the mark. As a whole, the mark is acceptable, but the USPTO wants to have you state that there are portions of the mark that are “public domain.” In a situation like this, the totality of the mark is more than a sum of its parts.
  Once you’ve ascertained what issues the USPTO has with your application, you can formulate a response to address the issues fully and swiftly.

3. Seek Legal Counsel
Some Office Actions might seem to be addressed easily enough, but experienced attorneys understand the nuances of particular Office Actions and might know of responses that could prevent additional Office Actions that stem from the initial response. You’ve spent a considerable amount of time and money in preparing your application, and you don’t want pride to jeopardize over a year’s worth of work and the associated costs.

4. Respond to the Office Action
If the Office Action is non-final, you must submit a response within three months of the issuance date. Note that until December 3, 2022, an applicant had six months to respond, from the issuance date. If you’ve had trademark experience in the past, it’s very important to note this distinction, because many individuals delay preparing a response, and this shortened deadline has caught some experienced business owners off-guard. An adequate response should:

• Address each issue raised by the examiner with specific arguments or amendments.
• If the issue is a likelihood of confusion, you may argue that your trademark is sufficiently different from the cited mark or that the goods and services are unrelated. Typically, in a situation such as this, using precedent of marks in similar positions is a good method in arguing your case for allowance.
• If the USPTO claims the mark is too descriptive, you could argue that the mark has acquired distinctiveness in the marketplace or that it the mark is suggestive rather than descriptive. For example, Greyhound would be considered a suggestive mark, because it suggests swiftness, but does not speak to a bus line directly. Much like likelihood of confusion Office Actions, these responses are typically nuanced and can benefit from an experienced attorney.
• For specimen rejections, you will need to submit a new specimen that better demonstrates the trademark in use. It could be a screenshot of a webpage or the packaging of the product.

5. Monitor Your File
The process of obtaining trademark registration requires attention to detail and deadlines. If you receive an Office Action, review it, ascertain what actions it requires, and plan your response. Additionally, you can always follow your trademark’s registration process through the USPTO’s Trademark Status and Document Retrieval system, that has the full history of all documents related to your filing, be it from the applicant or the USPTO. We recommend that you check any pending trademark bi-weekly, just to remain as informed as possible and avoid being blindsided by an upcoming due date.

If you’ve received an Office Action from the USPTO, don’t panic! Contact us today to help you navigate the response process and ensure your application stays on track for successful registration.

With a business, branding is everything. From McDonald’s iconic “Golden Arches” to Nike’s catchphrase “Just do it!”, any savvy company is best served in protecting its intellectual property, and there’s no better way to protect your brand than to register a trademark with the United States Patent and Trademark Office (USPTO). Registering a trademark provides federal protection from infringement and entitles you to statutory damages. Trademarks can be images, names, or phrases, so long as they represent your business.

 

Getting Started

Since the application is a sunken cost that is non-refundable, regardless of whether the mark is approved, it is advisable to perform a search on the USPTO trademark search engine, to see what possible “competition” you might have for your mark. The link is here – Trademark Search Trademark Search (uspto.gov). The 45 International Classes cover any goods or services that a business might provide. It is advised to only be concerned with the International Class(es) that would apply to your mark. It’s why Dove Soap and Dove Ice Cream can co-exist. Trademarks exist to prevent consumer confusion, so ideally an individual wouldn’t take a bite out of a bar of soap, nor would they rub a chocolate-covered ice cream bar under their arms in the shower.

5 Levels of Distinction

Also, even if your mark is not found in the search engine, we will need to make sure that it has a certain level of distinctiveness. There are five levels of distinction for trademarks with the stronger the distinctiveness is, the more likely you’ll be approved for registration.

I. Fanciful

The highest level is “Fanciful.” This is a mark that has no relation whatsoever to the goods or services being offered and is also created solely to represent the good or service. Things like “Adidas” or “Xerox” are examples, as those words did not “exist” before the companies created them.

II. Arbitrary

The next level is “Arbitrary.” This mark is a word that has been known to the populace before the application/use of it as a mark, but it is wholly unrelated to the goods or services provided. Things like “Apple” or “Starbucks,” as if you’d never known of the computer company or the coffee chain, you’d be hard-pressed to assume what the companies do.

III. Suggestive

The third level is “Suggestive.” These marks suggest the product or service offered, without explicitly saying it. For example, even if you’d never heard of the chain, if I asked you if you wanted something from “Burger King,” you’d assume that it was a restaurant of some sort, probably selling hamburgers.

The next two levels are difficult, in terms of justifying federal protection.

IV. Descriptive

The “stronger” of the two is “Descriptive.” These marks describe the purpose, nature, or attribute of the product or service and are not considered to be eligible for registration. However, in exceptional circumstances, a descriptive mark could be registerable if it has acquired distinctiveness—through long-term usage in the eyes of consumers. When possible, you always want to argue that your mark is “Suggestive,” rather than “Descriptive,” and this is a common area where you’ll receive an office action from the USPTO, where they’ll claim it is the latter, and you’ll want to argue that the former applies.

V. Generic

Finally, the weakest mark is “Generic,” and it will never be protected, as it is too commonly used to have any distinctiveness. For example, I couldn’t trademark “Computer” or “Phone,” by themselves, as they are the names of the products they represent. (That being said, “iPhone” is a Suggestive mark, through the use of the letter “i” at the front of the name.) Also, a brand can be a victim of its success, in that it has come to dominate the market and as such, the brand name represents not just the particular product line, but the type of product in general. (Think of “Kleenex” being interchangeable with “facial tissue.”)

Even if you do get a refusal or opposition to the mark, once you’ve applied (an “Office Action”), you will have the ability to respond to that office action to state your case why their refusal is not well-reasoned, so know that you can always fight back against a refusal.

At some point in the application process, you must show that the mark is in use in commerce. If you have an idea for a slogan or a logo, but don’t have it currently used to represent your business, you can still file to register the trademark, but at some point, you will need to show that it is being used by your goods or services.

Give Us a Call

The experts at Saunders, Walsh & Beard are more than happy to assist you with any questions or needs in registering a trademark, renewing a trademark registration, or defending against an Office Action. The trademark process is a lengthy one, where applications submitted aren’t reviewed for ten months, as of 2023. You want to make sure you have a professional on your side to save you the time and stress of undergoing this process alone.