An office action is the technical definition of the letter issued by the examining attorney with the US Patent and Trademark Office (USPTO) as their response to a trademark application. There are two types of office actions:
- refusal of an application, and
- request for modification, clarification, or disclaimer.
At the Omni Legal Group, our team of experienced trademark attorneys in the Los Angeles area guides trademark applicants, investors, and authors on effectively responding to an office action. We stress the importance of retaining an attorney who specializes in this area of law, as their expertise is paramount in this process.
An office action can be substantive, non-substantive, final, or non-final, and there are proper ways of responding.
Substantive and Non-Substantive Office Actions
A substantive office action refers to a rejected application, while a non-substantive office action is a request for additional information or clarification. Understanding these distinctions is key to navigating the trademark application process.
There are ways to avoid a substantive rejection and to prepare for a request for more information.
Substantive Office Actions
The common reasons for an application’s rejection are confusion when compared to an existing registered mark or to an application in the process. The other reason is when an application only briefly describes the product or service.
The best way to avoid a substantive office action is research. An experienced trademark attorney will thoroughly search existing trademarks for comparison against a client’s application. This research will gauge the risks of a rejection. Drafting specific descriptive language of the product or service seeking registration or a pivot to another mark will mitigate the risk of rejection.
Non-Substantive Office Actions
These office actions are issued when the USPTO’s examining attorney needs additional information or clarification to fully consider the application. The typical requests are:
- disclaimers,
- specific information relative to the product or service,
- revisions to a description,
- additional filing fees if an application covers more classes,
- clearer .jpeg image, and/or
- additional specimens of use.
The disclaimer request usually needs declaratory language when an applicant is not seeking a trademark for a common, generic name. For example, if an applicant is seeking to register “Mary’s Pies,” the disclaimer would cover the word “pies.”
Response Time to an Office Action
The response time specific to a trademark office action cannot be extended. Extensions only apply to responses to patent office actions.
The non-extendable deadline to respond to a trademark office action is six (6) months from its issue date.
Non-Final and Final Office Actions
The Non-Final Office Action
The first office action issued by the USPTO examining attorney is non-final. The date of the non-final action begins the 6-month response time for an applicant to fully respond to all matters cited in the action.
An experienced Los Angeles trademark attorney will know how to strategize the response. If registered trademarks are up for renewal within the 6-month period, it can be worthwhile to wait and see if the trademark renews. The need for clarifications relative to a competing trademark that has since expired would become moot, saving the applicant the legal fees for preparing a response.
The Final Office Action
Final office actions are issued when the response to the non-final action does not convince the examining attorney. The rejections are primarily based on the application’s lack of descriptive language compared to the response.
It is always best to introduce and support new points from those in the application. Repeating the application’s contents in a response will lead to a rejection.
There are processes for reconsiderations and appeals, but it is always in the applicant’s best interest to raise all points that could lead to approval.
Getting Started with your Trademark? Contact an Experience Trademark Attorney in Los Angeles Today!
Responses to trademark office actions must be researched against the contents of the original application. The timing of any renewal of competing trademarks will anticipate the proper response to a non-final action effectively and efficiently for the client.
If you are seeking legal counsel and guidance on preparing and submitting a trademark application, it is in your best interest to work with an experienced and reputable law firm such as the experts at the Omni Legal Group, specializing in intellectual property.
Omni Legal Group represents clients throughout the greater Los Angeles area, including Beverly Hills, Santa Monica, Culver City, and many others. For further information and/or to schedule a consultation with one of expert Los Angeles trademark attorneys please contact Omni Legal Group at 310.860.2000 or visit www.OmniLegalGroup.com to learn more.