Office Actions and Replies

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Office Actions and Replies

An official Office Action received from the United States Patent and Trademark Office on an application to register a trademark generally acts as a non-final refusal of the application. The applicant’s options, by no means, end there. Generally, a six (6) month period is provided to respond to and to amend the application, where appropriate. An applicant even has options after receiving a FINAL refusal of a trademark application.  Responses to Office Actions, even final Office Actions can include additional evidence and legal argument to convince the Examining Attorney to reconsider the initial or final refusal, and to convince her or him otherwise.

We receive many inquiries from business owners who are facing deadlines to respond to Office Actions who have either tried to file their applications themselves, had an unqualified, non-trademark attorney file, or used a paralegal service or service like Legal Zoom to file the application.  Sometimes the damage is irreversible.  Many of these companies and firms fail to mention the possibility of Office Actions, refusals, additional fees and additional filing requirements.  However, these problems can often be fixed by an experienced trademark attorney.

When Santucci Priore, P.L. files a new application for United States Trademark Registration, or is retained to respond to an official Office Action, we file a Power of Attorney so that all future correspondence from the USPTO regarding the application is sent directly to our law firm.  That way, we can keep track of the deadlines and other requirements of the United States Patent and Trademark Office, and you can focus on growing your business.

Common issues that are raised by Examining Attorneys at the USPTO in refusing applications and in issuing Office Actions are:

  • • Likelihood of Confusion*
  • • Disclaimer
  • • Specimens to Not Match the Drawing of the Mark
  • • Specimens Do Not Show Use In United States Commerce
  • • Drawing of the Mark Does Not Meet Specifications
  • • The Recitation of Services or Identification of Goods is Indefinite
  • • Multi-Class Requirement**
  • • Generic Marks / Generic Words
  • • Merely Descriptive Marks / Descriptive Words
  • • Primarily Geographically Descriptive Marks
  • • Primarily Geographically Misdescriptive Marks
  • • Purely Ornamental Marks
  • • Other

(For more details about some of the bases for rejection listed above, read the section of our website under the subheading “Basic and Comprehensive Trademark Searches”)

We are equipped to, and have extensive experience in responding to, arguing against, amending, modifying and/or otherwise complying with all of the above requirements and bases for refusal, and more.  Often these Office Actions add expense to the application process.  If is therefore advisable, even according the United States Patent and Trademark Office, that you retain an experienced trademark attorney to file your applications.  Many of these problems raised in Office Actions can be avoided when an application is properly drafted and filed by an experienced professional.

Deadlines are strictly enforced, and requirements can be confusing.   Contact an attorney, if you believe you need one, and do so in a timely manner to maximize your chances of success. The attorneys and staff at Santucci Priore, P.L. have handled thousands of Office Actions from the United States Patent and Trademark Office, and are equipped to appeal any adverse decision through all available avenues and appellate levels including, without limitation, the USPTO’s Trademark Trial and Appeal Board, the Court of Appeal for the Federal Circuit and the United States Supreme Court.

*You should immediately contact an experienced trademark attorney if you have received an Official Office Action that cites “likelihood of confusion” as a basis for refusal of your application.  This means that you and your company have potential liability for trademark infringement.  In most jurisdiction in the United States, despite any corporate protection, the decision makers in a company including, officers, directors, managers, employees, etc. can be sued personally for trademark infringement if they were the moving force behind the decision to adopted the subject trademark.

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