What are USPTO Office Actions
More than 300,000 trademarks are filed annually with the United States Patent and Trademark Office (USPTO). A very high percentage of those trademarks filed with the USPTO receive an “Office Action.” An Office Action is a preliminary refusal. It is a notice to the applicant that the USPTO examiner reviewing the trademark application has made a determination that there is some issue with the proposed trademark or the trademark application which would bar registration if not properly addressed.
Type of Trademark Office Actions
Trademark Office Actions, or preliminary refusals, are generally broken into two categories. Non-substantive Office Actions are those preliminary refusals that deal with an easily-addressed technicality. For example, it is very common for the trademark examiner to take issue with an applicant’s description of goods or services and to require that the applicant clarify the description of goods or services or include more definitive statements about what exactly the applicant intends to offer under the proposed trademark. Other examples of non-substantive Office Actions include those preliminary refusals in which the trademark examiner objects to the specimen or drawing submitted by the applicant. The trademark examiner, may, for example, take issue with the fact that the specimen fails to show that the proposed trademark is actually functioning as a trademark. The examiner may also refuse a trademark application if the examiner finds that the drawing does not match the specimen. These are non-substantive office actions because they do not challenge the registerability of the trademark itself.
Substantive Office Actions, on the other hand, are those preliminary refusals in which the trademark examiner challenges the trademark’s capacity for registration. During the trademark examination process, the trademark examiner is required to conduct trademark conflict searches to ensure that the proposed trademark is not confusingly similar to other pending or registered trademarks at the USPTO. The examiner also reviews the proposed trademark to ensure that it does not merely describe the goods or services sold under the trademark and that the trademark is not merely a surname or the name of a geographic area associated with the goods or service. If, during the examiner’s clearance searches the examiner locates trademarks that are confusingly similar to the proposed trademark, the examiner will issue a 2(d) Office Action (or a Confusingly Similar Office Action). Such a substantive 2(d) Office Action will identify the trademark(s) that the trademark examiner believes is conflicting and outline why the examiner believes that the trademarks are confusingly similar. Likewise, if the trademark office finds that the proposed trademark merely describes the goods or services offered under the trademark the trademark office will issue a 2(e) Office Action (also known as a merely descriptive Office Action). In such a refusal the USPTO examiner will explain why, in the examiner’s opinion, the trademark is “merely descriptive.”
What to do when you receive an Office Action
As noted above, a very high percentage of USPTO trademarks have Office Actions issued against them at some point during the registration process – so do not panic! Once you receive a trademark Office Action, the first step is to mark your calendar with the applicable deadline. For most Office Actions, you will have 6 months during which to submit a response and address the issues raised by the trademark office. Next, identify whether it is a substantive office action or a non-substantive office action. Keep in mind that it is fairly common for Office Actions to contain both substantive and non-substantive issues.
The non-substantive issues in Office Actions are generally addressed with a minor amendment or with the submission of new or revised materials (such as a new specimen or a revised drawing). Substantive Office Actions (such as 2(d) refusals or descriptiveness Office Actions) are addressed by submitting arguments to persuade the trademark office to allow registration of the proposed trademark. Office Action responses for substantive trademark refusals are similar to legal briefs – they include arguments but also include researched case-law and other trademark case examples to bolster and support the applicant’s argument that registration of the proposed trademark should be allowed.