Office Actions – how the Trademark Office does its business

Why did I get an “Office Action”?

Trademark Office issues an office action to tell the owner that it is refusing to register the trademark, and why. But this refusal is not necessarily final. The trademark owner can try to convince the Trademark Office it was wrong or has made a mistake. Often that explanation includes why the law says the Trademark Office should allow registration. Other times, the reason may be simple to overcome if one is familiar with the rules.

What is the “Office Action” I got from the Trademark Office?

This is a notice from the Trademark Office. It tells trademark owner that it is refusing to register the trademark – at least for now – and why. The trademark owner can try to convince the Trademark Office that the office action is wrong. A trademark owner can explain why the law says the Trademark Office should not refuse registration. Some times, the trademark owner can make simple changes or responses allowed by the rules.

Why is the Trademark Office saying there is confusion about my trademark?

The Trademark Office cannot register a trademark if it believes there is a “likelihood” of confusion with another trademark that is already registered. In this case, the government attorney reviewing your application thinks that your trademark – for the goods or services that you claimed – is likely to be confused with the other trademark and its goods. Often, the first argument they make is very one-sided. And many times, the trademark laws do not agree with those arguments. That’s whey it is important to be able to show why the law, or the facts that the Trademark Office originally ignored, show your trademark should be registered.

Why is the Trademark Office saying I must disclaim my trademark?

The Trademark Office will not allow owners to get exclusive rights to any trademark (or parts of a trademark) that just describes the owner’s goods or services. The office action may “require” disclaimer for part of that trademark, and mean that the owner would not get exclusive rights to that part, except as part of the whole trademark. The “requirement” in the office action is not absolute. An exception exists if an owner can show the trademark has become ‘distinctive’ – but one has to convince the Trademark Office.

Why is the Trademark Office saying my trademark is just descriptive?

The Trademark Office will not allow owners to get exclusive rights to any trademark that just describes the owner’s goods or services. It may refuse to register trademarks of this sort. But an exception exists if an owner can show the trademark has become ‘distinctive.’ This is something that the owner has to convince the Trademark Office about. The rules make certain situations more likely to help the trademark owner do this.

When do I have to respond to the “Office Action” I got from the Trademark Office?

A response to an office action is due within six months of the “Issue/Mailing Date” that appears above the explanation of reasons for refusing to register the trademark. This is not extendable. You might be able to save it, however, even after the Trademark Office says the application was abandoned.