USPTO Office Action Response

“Office Action” is the term the UPSTO uses when it has an issue or a question about a trademark application. The examining attorney within the USPTO typically sends an Office Action to notify an applicant about issues with his or her application. The letter will most often include the reason why registration is being refused or what requirements need to be satisfied. In most cases, an applicant must respond to an Office Action within six months from the date the Office Action is issued or the USPTO will abandon the application, the application fee will not be refunded, and the mark will not register. An office action may have important legal consequences and you should consider consulting with an attorney about the appropriate response.

There are generally two types of office actions:

• Non-final actions: This type of Office Action raises an issue for the first time and a response can be made to the examining attorney.
• Final actions: This type of action issues when the applicant’s response to the prior Office Action fails to address or overcome all issues. An applicant’s response to final Office Action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.

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Most people initially apply for a mark to be on the Principal Register. The Supplemental Register is another option. A descriptive mark, a surname or a geographic term, may be more appropriate for the Supplemental Register. Often times, the USPTO will issue an Office Action suggesting filing on the Supplemental Register instead of the Principal Register.

According to the USPTO, on the Supplemental Register, you can still:

• Use the ® symbol
• Put others on notice that you are already using the mark
• File a trademark infringement suit in federal court
• Prevent others from obtaining confusingly similar marks from the USPTO - even on the Principal Register.

Unfortunately, a company with a mark on the Supplemental Register may not the presumed owner of a valid mark if there is a lawsuit. A Supplemental Register mark generally cannot be used to prevent the importation of counterfeit goods. Finally, Supplemental Register marks are generally not eligible to become incontestable like a mark on the Principal Register can. However, if a mark obtains secondary meaning, the owner can refile for acceptance on the Principal Register even if they first filed on the Supplemental Register.

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A mark is often (but not always) a group of words with one or more of them describing the product (e.g., tires) or it may be merely descriptive (e.g., great). While it may be appropriate to register the mark as a whole, the USPTO may question an attempt to claim some of the individual product or descriptive terms. Thus, some companies decide to disclaim those words without giving up on registering the mark as a whole or the USPTO may ask an applicant to do so after the fact.

The disclaimer does not remove the unregistrable part of a mark or affect its appearance. A disclaimer appears on the USPTO database that lets the world know the company is not making an exclusive claim to that particular part of the mark. Failure to disclaim part of a mark may be cause for rejection. Often times (but not always), the USPTO can issue an Action Letter seeking to disclaim the unregistrable parts of a mark, which may delay the application. At this point, there are generally two options: agree with the USPTO or decide to fight the request to disclaim. Because it may have significant legal ramifications on the protections associated with the mark, consider consulting with an attorney after receiving an Action Letter with a request to disclaim part of a mark.

The USPTO has published the following examples to illustrate when a disclaimer is likely required:

• Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
• Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
• Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole”
• Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
• Well-known Symbols: Disclaiming the “$” for a financial services company.
• Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
• Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. They example they use is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
• Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”

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Because we are not a law firm, we cannot provide legal advice and can’t represent you before the PTO. That means we cannot assist with Office Action responses that would necessitate a legal argument. Therefore, Trademark Engine can only assist with Office Action responses where the USPTO suggests what changes will be needed and only after you decide on your own that you would like to accept the proposed changes. The most common examples of these types of office actions include (i) changes to the description or class assignment where the USPTO provides a recommendation as to which class or description to use; (ii) the USPTO provides guidance on the replacement specimen they want to see; (iii) movement to the supplemental register; (iv) missing non-profit documentation or use of name/foreign words or symbols; or (v) a disclaimer request. Payment for Office Action responses that cannot be provided is automatically refunded.

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A recent statistic reported that more than 60% of trademark applications receive some type of Office Action. This is from the total population of filings which includes filings from lawyers, individuals and third-party service providers.

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In most cases, the deadline is six months from receipt of the Office Action notice from the USPTO.

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In most cases, the USPTO treats applications in which an Office Action is not answered as abandoned by the applicant if no response is received within six months. The USPTO filing fee is generally not refunded and future efforts to register the trademark will typically require the applicant to start all over, including payment of new USPTO filing fees.

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Trademark Engine makes every effort to make determinations as to the eligibility of assisting in an Office Action response in a matter of days (or shorter for expedited services). If we are unable to assist in the response, the applicant may be able to respond on its own or may seek out legal counsel to file the response.

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