If you have gotten a Trademark Office action from the United States Patent and Trademark Office (USPTO), you may be at a loss as to how to respond to an office action, what evidence you will need or what format everything needs to be in. This letter is telling you that you have an issue with your application, and need to address the problems quickly to avoid rejection. At this point, you should go over every detail of your application and make sure everything is very detailed and complete. The letter will generally state what the issue is, or what problem needs to be clarified. It is important to make sure you address the issue completely in your response, because if you do not convince the board at this point, getting your trademark approved becomes very difficult.

In most cases, the Office Action states there is confusion with an existing mark. Typically, this can be avoided by performing a trademark search. Hiring a good trademark attorney to perform the search is a good idea at this point. They generally have resources and experience to make sure that the mark you are trying to register is not too similar to another companies mark.

How to Respond to An Office Action

Administrative Office Actions

• Mistakes on the application
• Leaving something out of the application
• The description of the mark was not clear enough
• The TTAB board did not understand something and wants you to clarify

Substantive Office Actions

• Your mark is “confusingly similar” to another companies mark.
• Your mark is refused on the basis of “mere descriptiveness” or it seems too common or generic.

Typically, your trademark lawyer will be able to advise you on the arguments you need to prepare for Substantive Office Actions. While Administrative Office Actions are usually easy to solve, Substantive Office Actions will require preparing an argument in defense of your application.

Ask yourself these questions

• Is there any resemblance between your trademark and any other trademarked logo or brand?
• Is there any resemblance between your products or services and existing trademarks on the market?
• Do you have any competitors, and if you do how similar are they to your company and are they trademarked?
• Does your product or service come from experience with another similar product or service that might be trademarked?
• Have you ever signed a contract while working with a similar product or service?

How to Respond to An Office Action

Answer the questions very carefully and in full detail. Try not to limit your trademark any more than necessary in your detailed statement. Consulting with a trademark attorney will help you to present your response in the correct format. Read the response you are sending again, several times. This may be the last chance (without an appeal) to fully satisfy the requirements the USPTO are requesting.

Send your response promptly.

It’s essential to respond to a Trademark Office action as quickly as possible. The USPTO will tell you how long you have to respond to the office action. Additional tasks may take place behind the scenes, so do not wait until the last month to respond.

The TTAB board will make a decision.

Non-Final – You still have the opportunity to correct, explain or otherwise produce evidence to support your case. Usually sent in the third month.

Final – Accept the ruling, or appeal to the Trademark Trial and Appeal Board.