What is an Office Action?
It is an official application by USPTO in which they mention the problems with the trademark that you have submitted for review. They also note the issues with the application itself. The examining attorney may require you to fix all the problems with your application, or they may refuse the trademark in case they feel it can be confused with an existing brand.
Your response to the office action has a particular deadline. Generally, you have six months to respond from the issue date of the office action. However, sometimes the deadline may be shorter. You must read the letter carefully and respond before the deadline. In case you do not respond to the message before the deadline, your trademark will be rejected, and your application fee will not be refunded. The law sets the deadline, and USPTO cannot extend your deadline.
To file a response, you have two ways. Either you respond via phone or email, or you have to answer using TEAS. For a minor amendment, like clarifying the goods or services, the examiner may suggest you email or phone them. However, the email goes public on the USPTO website. For the response through TEAS (Trademark Electronic Application System), an authorized person must sign your response. Otherwise, the answer is not considered valid.
You must read your letter carefully and go through every problem raised by the USPTO in its official action. After going through these issues, you must respond to each of them thoroughly and adequately—complete means you have to answer all the concerns. You have to give reasons why you agree or disagree with each requirement. The examiner may refuse your trademark based on some facts and information, which they will mention. At this point, you have to argue against this refusal, and you must provide a valid point in response.
The USPTO staff can answer your questions related to the office action; however, they cannot give you legal advice. The person to whom you can contact is the examining attorney. He knows everything about your office action and can answer your questions quickly. You can find his contact information at the end of your office action. You may sometimes need to wait two days to get a response. In case you do not receive a response, you can contact the examining attorney’s supervisor or TAC, but they can only answer broad questions.
Responding to common refusals
There are two types of requirements that you may need to respond—definite identification of goods or services and disclaiming a portion of the trademark. The common refusals can be a specimen refusal, likelihood refusal, or descriptiveness refusal. You have to respond to all of them very carefully.
To avoid unintended consequences, contact a legal expert. Attorneys are licensed and certified by their particular State Bar and deliver expert recommendations and counsel.