What is an office action?

After the USPTO receives a trademark application, an examining attorney may issue an office action to notify the applicant of a problem with the application. The office action will explain why registration is being refused and/or what requirements must be satisfied. In most cases, the applicant must respond to an office action within 6 months from the date the office action is issued or the application will be abandoned.

Office actions are relatively common and can be overcome in a majority of the cases by properly responding to each issue addressed in the action. An office action response may be as simple as a phone call to the examining attorney or as complex as a multi-page legal document explaining, in depth, why the applicant should receive registration. Lengthy substantive office action responses are appropriate for refusals based on a likelihood of confusion, merely descriptive, genericness, primarily a surname and geographic descriptiveness.

If you need to respond to an office action, our team of attorneys has the expertise to evaluate and handle any issue before the USPTO.

Contact us for a free consultation with a trademark attorney to discuss your options!

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