Office Action - How To Proceed

If you’ve already begun the trademark registration process yourself, then you know that the application process is full of pitfalls and legal loopholes. However, few trademark-related experiences are more frustrating than the dreaded Office Action. Office Actions can set you back months in the registration process. Plus, they require even more work (and oftentimes more money) from you.

What is an Office Action?

The USPTO trademark attorney that reviews your trademark application may issue an Office Action for a variety of reasons:

• The trademark you’re attempting to register is too similar to a trademark that has (1) already been registered or (2) has been applied for in the same period as your mark.
• Your trademark application contains a technical error.
• It is not possible for your trademark to be registered as a trademark. (Unfortunately, many people still do not understand what can be trademarked.)

When the USPTO examining attorney comes across one of the above issues (or any other issue) with your trademark application, you will be issued an Office Action, which freezes your trademark application until you respond.

Applicants have six months to respond to an Office Action. Otherwise, the offending trademark application is discarded and the applicant must begin the process all over again.

I’ve been issued an Office Action. What do I do?

Though receiving an Office Action from the USPTO isn’t the end of the world, it’s obviously frustrating. The registration process is brought to a grinding halt, and you now have to respond to the USPTO and comply with the reviewing attorney’s demands before any further action can be taken.

If you have received an Office Action, the first thing to do is seek legal help. While you are clearly free to attempt to reconcile the situation independently, our legal offices highly advise against this method. Most applications that are issued Office Actions do not have just one, simple, easy-to-fix problem. Trademark applications that have received Office Actions tend to have multiple and/or complicated issues that should be addressed by a professional trademark attorney.

If you do not have a trademark attorney, don’t hesitate to contact the Law Office of Xavier Morales.

How can I ensure that my application doesn’t receive Office Actions?

Of course, the easiest way to ensure that your application is not issued an Office Action is to use a professional trademark registration service the first time. No trademark attorney can guarantee protection against Office Actions. However, your chances of receiving an Office Action are dramatically lessened by using a professional trademark attorney.

Our trademark attorneys perform thorough searches of Federal, State, and Common Law databases to ensure that no similar or duplicate trademarks exist for your application. Furthermore, our experienced attorneys, who have filed hundreds of trademarks in the past, are experienced in drafting flawless applications that are rarely denied by the U.S.P.T.O.

If you’re serious about avoiding Office Actions in the application process, do yourself a favor and let the trademark attorneys at the Law Office of Xavier Morales handle your application.