What is the trademark registration process?
So you successfully submitted your trademark registration application, and then you wait for what seems like an entire season.
Yes, in fact approximately three months after successfully submitting your trademark application, you will receive a letter from your assigned examining attorney. An examining attorney who is an employee of the United States Patent & Trade Organization (“USPTO”) and examines your application for registration of your federally registered trademark. An examining attorney also reviews and determines compliance with the legal and regulatory requirements. Each application is reviewed by an examining attorney. If, for any reason, the examining attorney determines that the trademark cannot be registered, he or she will issue a letter known as an Office Action.
An Office Action is essentially a notice from the USPTO informing you of the issues with your trademark application. It also indicates the deadline to address those issues. Make note of the deadline and calendar the due date to respond to the Office Action accordingly.
Responding to USPTO Office Actions
Typically, the deadline to respond to an Office Action is 6 months from the date of issuance. However, it’s important to thoroughly review your Office Action because sometimes the deadline can be shorter. If you do not submit a timely response, your application will be considered abandoned. An abandonment of your application means that your application process will end and your mark will not register and you will not be entitled to a refund.
Since everything is done through the USPTO.gov website, the easiest way to respond to the Office Action is by using the Trademark Electronic Application System (“TEAS”). Use the electronic form titled "Response to Office Action" to respond to the Office Action.
However, before responding, don’t forget to thoroughly review the Office Action. It will likely be replete with legalese, but don’t let that overwhelm you because the Office Action also lists all the problems with your application and gives you a chance to address them .
Although your trademark registration application is a legal proceeding, you are encouraged to contact your assigned examining attorney with respect to the content of your Office Action. The examining attorney, however, cannot give you legal advice, but he or she can discuss the issues raised in your Office Action. You can find the contact information to your assigned examining attorney on the Office Action letter.
However, before contacting the examining attorney, take the time to thoroughly read and understand each and every issue raised by the examining attorney in the Office Action. Often, the examining attorney will provide examples and suggestions on how to overcome certain refusals.
Sometimes an Office Action will specifically suggest that you contact the examining attorney to resolve issues by an Examiner’s Amendment. In such instances, call or email the examining attorney as requested as this will help expedite your application process.
If you decide to respond to the Office Action on your own without the assistance of an attorney, you would need to plan ahead and not take the 6-month deadline for granted. I also suggest taking the time to become familiar with the TEAS Response to Office Action form as there are two important steps to consider with the Response form.
First, you must check the appropriate boxes for every issue in your Office Action. Second, it is important to fill out the Response to Office Action form in its entirety, because failure to address even one issue could result in the denial of your application as discussed below.
Important Tip
So, remember to respond to all issues listed in your Office Action. The examining attorney will be forced to issue a Final Office Action even if you fail to address only one issue and that could mean the end of your application process. So, make sure to raise appropriate arguments for all issues and make the necessary changes to meet the requirements set forth in the Office Action to avoid denial of your trademark registration application.
Abandonment & Revival
As discussed above, a response is due by the deadline provided in your Office Action. For most Office Actions, a response is due within six months. But, give yourself plenty of time in advance to respond. If you submit a response after the deadline, the examining attorney will not consider it and your mark will be abandoned, meaning it will no longer be considered for federal registration.
In the event that your mark goes abandoned for failure to timely respond to the Office Action and such failure was unintentional, you may be able to file a Petition to Revive for an additional fee. The petition form is available through TEAS and must be filed promptly, generally within 60 days after the date the application is marked as abandoned. If you are unable to revive your application, you must file a brand new application, pay a new filing fee, and start all over again. To avoid abandonment, it is good practice to check the status of your application every three to four months and file your responses when they are due.
Checklist
- Identify the date of issuance on the Office Action.
- Find the due date and mark it in your calendar (it’s usually 6 months, but not always).
- Make note of the examining attorney’s contact information.
- Does the Office Action specifically suggest that you contact the examining attorney to resolve issues by an Examiner’s Amendment? If yes, then call or email the examining attorney as requested.
- Plan ahead and weigh the pros and cons of responding to the Office Action yourself as opposed to hiring an attorney.
- If you decide to respond to the Office Action yourself, read and respond to each and every issue listed in the Office Action.
Disclaimer: The information provided in this blog is informational, ONLY, and generally based on California law. The subject matter and applicable law are evolving or in constant state of change. No legal advice is given and no attorney/client or other relationship is established or intended.
