More than 300,000 trademarks are submitted each year with the United States Patent and Trademark Office (USPTO). A very high percentage of those trademarks filed with the USPTO get an “Office Action.” An Office Action is a preliminary rejection. It is a notification to the applicant that the USPTO examiner examining the trademark application has made a decision that there is some concern with the proposed trademark or the trademark application which would bar registration if not appropriately resolved.
Kind Of Trademark Office Actions
Trademark Office Actions, or initial rejections, are typically gotten into two classifications. Non-substantive Office Actions are those initial rejections that deal with an easily-addressed technicality. For instance, it is very common for the trademark inspector to disagree with a candidate’s description of items or services and to need that the candidate clarify the description of goods or services or consist of more definitive declarations about what exactly the applicant plans to provide under the proposed trademark. Other examples of non-substantive Office Actions include those preliminary refusals in which the trademark examiner objects to the specimen or drawing submitted by the candidate. The trademark examiner, might, for instance, disagree with that the specimen cannot reveal that the proposed trademark is actually operating as a trademark. The inspector may also decline a trademark application if the examiner 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 capability for registration. Throughout the trademark assessment procedure, the trademark inspector is required to conduct trademark conflict searches to ensure that the proposed trademark is not confusingly similar to other pending or registered trademarks at the USPTO. The examiner also evaluates the proposed trademark to make sure that it does not merely describe the items or services offered under the trademark which the trademark is not simply a surname or the name of a geographic location related to the products or service. If, throughout the examiner’s clearance searches the examiner finds trademarks that are confusingly much like the proposed trademark, the examiner will release a 2( d) Office Action (or a Confusingly Similar Office Action). Such a substantive 2( d) Office Action will identify the trademark( s) that the trademark inspector believes is clashing and outline why the inspector believes that the trademarks are confusingly comparable. Likewise, if the trademark office finds that the proposed trademark merely describes the items or services offered under the trademark the trademark office will issue a 2( e) Office Action (also known as a merely detailed Office Action). In such a rejection the USPTO inspector will describe why, in the examiner’s opinion, the trademark is “simply detailed.”
What to do when you receive an Office Action
As noted above, an extremely high percentage of USPTO trademarks have actually Office Actions issued versus them at some time throughout the registration procedure– so do not stress! Once you receive a trademark Office Action, the initial step is to mark your calendar with the suitable due date. For most Office Actions, you will have 6 months during which to send a reaction and resolve the problems raised by the trademark office. Next, determine 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 concerns in Office Actions are typically addressed with a small change or with the submission of brand-new or revised materials (such as a new specimen or a revised drawing). Substantive Office Actions (such as 2(d) refusals or descriptiveness Office Actions) are addressed by sending arguments to persuade the trademark office to enable registration of the proposed trademark. Office Action responses for substantive trademark refusals resemble legal briefs– they include arguments however also include researched case-law and other trademark case examples to boost and support the applicant’s argument that registration of the proposed trademark must be enabled.