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Trademark Office Actions: What They Are & How to Respond to Them

Updated: May 7

After working on many trademark applications I noticed there is confusion surrounding what an office action is. We want you to be protected, so we are here to help with any trademark questions you may have.

Today, I'm here to clear up what a trademark office action is and the best way to respond to one!

What is a Trademark Office Action?

A trademark office action is a form issued to applicants when their trademark application has been rejected as-is. Trademark office actions are not rare and give applicants another chance to gain approval through revision.

Having proper legal guidance when responding to a trademark office action increases the chances of gaining approval.

How Do I Respond to an Office Action?

Once you receive a disapproval letter, you have six months to formulate your response. It's important to handle your response as professionally as possible — it's the difference between an approved or rejected trademark application.

By contacting the United States Patent and Trademarks Office, you should be able to find out which attorney was assigned to your case. This will allow you to learn how to best respond to the office action.

For example, does this particular attorney prefer a specific format for responses? Have they dealt with similar office actions in the past? What did other trademark attorneys do in the past that was either successful and unsuccessful?

These details may seem small, but they require a high level of diligence and often play a major role in getting a trademark accepted or not.

The United States Patent and Trademark Office allows applicants to respond to office actions in a few ways. Not all methods are suitable depending on what needs to be changed and who is handling your case. We will use our experience to guide you toward the ideal response based on your specific needs.

Phone or Email

Responding by phone or email is the quickest way to correct your application. However, responding via phone or email is usually reserved for simple amendments. These small changes include things such as further detailing your goods or services.

It is worth mentioning that all email communication will be made public-record as part of your application file.

Trademark Electronic Application System (TEAS)

Applicants can also respond to the trademark office action using the USPTO’s electronic services system. You'll need to create an account before making corrections. This method allows you to fix all of the necessary fields with as much accuracy as possible. At this stage, it's best to enlist the help of an experienced attorney who can ensure all relevant information is included.

How Long Do You Have to Respond to an Office Action?

Generally speaking, an applicant has six months to respond with corrections to an office action. Failure to meet this deadline will result in application abandonment. Six months may sound like a long time, but it’s crucial to send it back as soon as possible.

What is a Final Office Action?

A final office action is sent when the applying party neglects to make all the necessary changes on the standard trademark office action form. Failure to promptly amend the specified fields on a final notice will result in application abandonment without refund. If this happens, the trademark application process must be started from the beginning.

How Do You Overcome Trademark Rejection?

If you have been denied trademark approval in the previous four months, we can help you file a request for reconsideration.

Oftentimes, if the type of trademark you're applying for is eligible, it is rejected because of the language used in the application. Anything that seems vague, misleading, deceptive, or immoral warrants denial by the USPTO. This isn’t always intentional, and we will be able to look over your application in great detail, rewrite it, and request an appeal.

Professional Trademark Office Action Responses

Don’t let someone take credit for your hard work. Our experienced team will guide you through the steps to ensure your trademark application gets approved. Contact us today to get your great idea protected!

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