Part of obtaining a federal trademark registration from the United States Patent and Trademark Office (“USPTO”) can sometimes mean having to respond to an Office Action.
An Office Action is essentially a written request for additional information or clarification by the Examining Attorney that is reviewing your trademark application. When an Office Action is issued, you have six months to respond to the Office Action or face failure to respond, which leads to Abandonment of the trademark application. The Office Action details the points you must address in your response and sometimes can be as complex as a registration refusal due to already existing marks in the same class or as straight forward as a change to the class description. Whatever the case, responding with clear and thorough arguments and information is essential to moving your application along to federal registration.
Once the Examining Attorney finds that the Office Action issues are resolved on your application (sometimes they do not), she will then approve the application for Publication in the Official Gazette (“OG”). Once in the OG, third parties who believe they will be damaged by the registration of your trademark can oppose the registration by filing a Notice of Opposition or a Request for an Extension of Time to Oppose. Did I lose you? I will cover the publication process in my next post, so don’t worry, I’ve got your back (UPDATE: check out the post on Publication here).
Bottom line: Do not take Office Actions lightly because they can be a trademark killer if handled incorrectly.