More than 300,000 trademarks are filed every year with the United States Patent and Trademark Office (USPTO). An extremely high percentage of those trademarks submitted with the USPTO receive an “Office Action.” An Office Action is an initial refusal. It is a notice to the applicant that the USPTO inspector examining the trademark application has actually made a decision that there is some issue with the proposed trademark or the trademark application which would bar registration if not effectively resolved.
Kind Of Trademark Office Actions
Trademark Office Actions, or initial rejections, 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 typical for the trademark examiner to take issue with a candidate’s description of items or services and to need that the applicant clarify the description of goods or services or include more conclusive statements about exactly what the candidate means to use under the proposed trademark. Other examples of non-substantive Office Actions consist of those initial rejections where the trademark examiner objects to the specimen or drawing submitted by the candidate. The trademark inspector, may, for example, disagree with the fact that the specimen fails to reveal that the proposed trademark is in fact working as a trademark. The examiner may also refuse a trademark application if the inspector discovers 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 where the trademark inspector challenges the trademark’s capacity for registration. Throughout the trademark evaluation procedure, the trademark inspector is required to perform trademark conflict searches to ensure that the proposed trademark is not confusingly much like other pending or registered trademarks at the USPTO. The inspector also examines the proposed trademark to guarantee that it does not simply explain the goods or services sold under the trademark and that the trademark is not merely a surname or the name of a geographic location related to the goods or service. If, during the inspector’s clearance searches the inspector finds trademarks that are confusingly just like the proposed trademark, the inspector will provide a 2( d) Office Action (or a Confusingly Similar Office Action). Such a substantive 2( d) Office Action will determine the trademark( s) that the trademark examiner thinks is contrasting and overview why the examiner thinks that the trademarks are confusingly similar. Similarly, if the trademark office finds that the proposed trademark merely explains the items or services offered under the trademark the trademark office will release a 2( e) Office Action (also called a simply descriptive Office Action). In such a refusal the USPTO examiner will describe why, in the inspector’s viewpoint, the trademark is “merely descriptive.”
Exactly what to do when you get an Office Action
As noted above, a very high percentage of USPTO trademarks have Office Actions released against them at some time throughout the registration procedure– so do not worry! Once you get a trademark Office Action, the initial step is to mark your calendar with the relevant deadline. For the majority of Office Actions, you will have 6 months throughout which to send a response and address the problems raised by the trademark office. Next, recognize 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 concerns.
The non-substantive issues in Office Actions are normally addressed with a minor change or with the submission of brand-new or revised products (such as a brand-new specimen or a modified illustration). Substantive Office Actions (such as 2(d) refusals or descriptiveness Office Actions) are addressed by submitting arguments to encourage the trademark office to allow registration of the proposed trademark. Office Action reactions for substantive trademark refusals resemble legal briefs– they include arguments but likewise consist of researched case-law and other trademark case examples to bolster and support the applicant’s argument that registration of the proposed trademark needs to be allowed.