USPTO Office Action Response

When the UPSTO has concerns or questions regarding a trademark application, it uses the term "Office Action" to describe it. When a USPTO examining attorney finds problems with an application, they usually tell the applicant through Office Action. The letter will usually state the grounds for the registration denial or the necessary conditions. In most situations, the USPTO will abandon the application, the application money will not be refunded, and the mark will not register if the applicant does not respond to an Office Action within three months from the date the Office Action is issued. You should think about talking to a lawyer about what to do in response to an office action because of the potential serious legal ramifications.

Two main categories of office acts are typically:

• Non-final actions: This type of Office Action raises an issue for the first time and a response can be made to the examining attorney.
• Final actions: This type of action issues when the applicant’s response to the prior Office Action fails to address or overcome all issues. An applicant’s response to final Office Action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.

The Principal Register is where the majority of applicants first submit their mark applications. There is also the Supplemental Register. The Supplemental Register might be a better place for a descriptive mark, a surname, or a geographical phrase. The United States Patent and Trademark Office (USPTO) frequently suggests filing on the Supplemental Register rather than the Principal Register in an Office Action.

According to the USPTO, on the Supplemental Register, you can still:

• Use the ® symbol
• Put others on notice that you are already using the mark
• File a trademark infringement suit in federal court
• Prevent others from obtaining confusingly similar marks from the USPTO - even on the Principal Register.

revent others from obtaining confusingly similar marks from the USPTO - even on the Principal Register.

The term "mark" can refer to either a collection of words that describe the product (like "tires") or to something more abstract (like "great"). Although it would be suitable to register the entire mark, the USPTO might challenge an effort to claim certain product or descriptive phrases. Therefore, the USPTO may urge an applicant to disclaim those terms after the fact, or some corporations choose to do so without abandoning the idea of registering the mark altogether.

The disclaimer has no effect on the look or removal of the unregistrable portion of a mark. A disclaimer is posted on the USPTO database to inform the public that the corporation is not claiming exclusive ownership of that specific portion of the mark. Rejection may occur if any portion of a mark is not claimed. The United States Patent and Trademark Office (USPTO) may delay an application by issuing an Action Letter to disclaim the unregistrable portions of a mark. The next step is to either accept the USPTO's disclaimer or choose to oppose it. It is recommended that you seek legal counsel after receiving an Action Letter requesting the disclaimer of a portion of a mark, as this could have far-reaching effects for the trademark's rights.

The USPTO has published the following examples to illustrate when a disclaimer is likely required:

• Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
• Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
• Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole.”
• Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
• Well-known Symbols: Disclaiming the “$” for a financial services company.
• Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
• Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. They example they use is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
• Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”

More than 60% of trademark applications get an Office Action, according to a recent data. This is a subset of the overall filing population that includes requests made by individuals, attorneys, and other service providers.

The USPTO typically gives three months from the date of receiving the Office Action notification as the deadline.

If an applicant does not respond to an Office Action within three months, the USPTO will typically consider their application abandoned. In most cases, the USPTO will not give a refund for the filing money, and if the applicant wants to register the trademark again, they will have to pay the registration fees again.