After working on many trademark applications I noticed there is a confusion surrounding what an office action is.
About 3-4 months after filing your trademark application, it will be assigned to an examining attorney from the United States Patent and Trademark Office. This attorney will review
your case and do a thorough investigation into whether your mark meets the requirements for approval.
If it doesn’t meet the requirements, the attorney may issue what are called “Office Actions”.
In layman's terms, an office action is a refusal to approve your trademark application as-is. There are numerous issues that could trigger this disapproval, but that’s a bit more in-depth so I’ll save that explanation for another video.
After receiving the disapproval letter you have 6 months to formulate a response, either fixing the issues or arguing your case on why they should approve your mark. This response should be handled with great care as it will mean the difference between an approved or a denied application.
There are many attorneys at the USPTO, and you can often find out how the one assigned to your case typically handles these types of responses. This will assist in setting yourself up for the best outcome possible as knowing who you are working with is the prime factor in any negotiation.
For example, does this particular attorney like a specific format for responses? How about similar office actions in the past? What did other trademark attorneys do that was successful? What did other trademark attorneys do that was unsuccessful? These are nuaniances you don’t want to overlook when responding to office actions, and they will often take a great deal of time and diligence. A good trademark attorney will do this sort of homework for you.