Trademark-Office-ActionsFederal trademark registration is a long process and a trademark applicant will often need to respond to trademark office actions.  The purpose of trademark office actions issued by examining attorneys from the USPTO are to notify the trademark applicants of problems with the federal trademark application, including why applications are refused, rejected or what requirements must be satisfied to continue the federal trademark registration process.

When trademark applications are refused, examining attorneys send the individuals, businesses or their attorneys, trademark office actions to notify the applicants of problems that arose during the examination process. Trademark office actions usually contain (1) notice of informalities, or (2) basis for rejection/refusal of the trademark, or both. Notice of informalities usually involves technical flaws and missing requirements like when an applicant provides insufficient information and the examining attorney cannot determine exactly what the goods provided in the application are.  The two most common reasons for refusal of an application are (1) the trademark will likely cause confusion (likelihood of confusion refusal) with an existing trademark or (2) the trademark is descriptive (trademark descriptiveness refusal).

The USPTO examining attorney can send send an applicant two types of office actions: final and non-final actions. A non-final action occurs the first time an issue arises. A final action is sent when an applicant’s response to the prior office action does not address or overcome the issues in that action. The only response available for an applicant to the final office action is to either comply or appeal the final action to the Trademark Trial and Appeal Board (TTAB).

The two most popular reasons for a trademark applicant to receive a trademark office action indicating a refusal or rejection of the trademark is (1) likelihood of confusion with an existing mark, or (2) descriptiveness of the proposed trademark.

Responding to Trademark Office Actions

Trademark applicants typically have 6 months to respond to trademark office actions. If a trademark applicant fails to respond during this time period, the USPTO examining attorney will abandon the trademark application.  Once a trademark application is abandoned, there is a small window of opportunity to petition to revive the trademark application. It is likely, however, that the trademark application will not be revived and the trademark owner will lose all of his or her time and money expended in prosecuting the trademark.