I’ve Just Received a USPTO Office Action! What Should I Do?

An Office action can be a scary thing for a would-be trademark owner. You think the registration process is going along fine when all of a sudden, you get this letter from the USPTO, the United States Patent and Trademark Office. Inside, much to your dismay, is not a registration certificate for your trademark, but a letter detailing exactly why the USPTO has refused to register your mark.

Before we get into any information about Office actions, a few words about this post. This is designed as an incredibly basic overview of what a USPTO Office action is, what you should do if you receive one, and the deadline for response. The details of the two types of Office actions—procedural and technical—are reserved for another post, as are what you should do if the USPTO’s examining attorney denies your application even after you feel you’ve responded to the Office action with sufficiency. Here, we’re just going over the very basics of an Office action and what you need to do about it in very general terms.

So what exactly is a USPTO Office action? Well, it is essentially a letter that outlines the procedural or technical shortcomings that have prevented the USPTO from continuing with the registration process for you trademark. These can happen to anyone, regardless of whether you have hired a trademark attorney to help you with the registration process, or whether you’ve decided to go it alone and submit the application yourself. Sometimes, the deficiency in the application can be so minor that the examining attorney at the USPTO may just call you (or your attorney) to see if they can fix the problem over the phone. However, any type of major shortcoming in the application will warrant the USPTO actually sending you a letter Office action.

Now, if you receive an Office action, you need to keep in mind that you’re suddenly put on a very strict schedule for response. As with everything else with the USPTO, dates are of the utmost importance—first use in commerce, renewals, and of course, Office action response dates. As a result, you need to keep in mind that you have six months to respond to an Office action. If you take longer than the six month window to respond, your application will be deemed abandoned and you’ll have to start all over with the registration process—fees and all. While there is a two month grace period beyond the six month window, you really need to make sure you make it within the six month deadline, as that should be plenty of time to respond.

After you receive an Office action in the mail, and you’ve read this post, the only question that remains is whether you should try to respond to the USPTO Office action on your own, or enlist the help of a trademark attorney.

Image Courtesy: anieto2k

Eric Norton

Eric Norton

Business & Trademark Attorney at Norton Law Corporation
Eric Norton is a business and trademark attorney, and the founder of Norton Law Corporation, a modern law firm designed to help entrepreneurs with their legal needs. Eric also enjoys photography, gaming (tabletop and video), watches, and good design.
Eric Norton

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