Trademarks ~ Surviving the Unexpected

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What is an office action?

After filing a trademark application, the USPTO will send you an official letter known as office action. In the United States, office action is an official document written by the patent examiner in response to the patent application after thorough verification.

An office action is the first phase of the process. This is where all the legal issues concerning your trademark and application are listed. Make sure you settle all the legal problems mentioned in the office action well in advance before we start your trademark registration. By making a few changes, you can quickly get rid of legal issues with your trademark application.

The office action you receive is a document stating the reasons for the denial of your trademark registration application. Your application may be rejected if the proposed trademark is generic, if it is like any existing trademark, or if your brand is immoral. The examiner also checks whether sufficient information is provided or not. A written reply must be given for resolving major legal issues. You can write, mail, or call an attorney to examine to resolve minor legal matters.

Deadline for filing a timely response

If an office action is issued, they must receive a reply from your end within six months. The response received before the six-month deadline will be said timely. Please note that there will be a shorter deadline for a few types of office actions. Go through every line of your office action to get a clear idea of the specific deadline for filing a timely response. Note the deadline on your calendar, mobile, or personal computer, so that you can write the answer within the time frame.

Also, your application will be rejected, and the fees will not be refunded if you write a response to an office action after the last date. As the deadline for responding is set by law, USPTO has no right to extend the deadline or grant additional time.

How to file a response

Respond via a phone call or email:In case of priority actions with small legal issues, file a response via email or by making a call to the examining attorney. This process helps to speed up your trademark registration.

Respond online using TEAS: You need to correct the Trademark Electronic Application System form to file a timely response in online mode. They will accept the answer if and only if a proper person signs it.

File a complete response

Make sure you give a complete response to every legal issue mentioned in the office action. Try to get a clear idea about all the legal matters quoted in the office action. Write a reply to every problem and respond to each issue by explaining your views

With whom should you contact questions about your office action?

The experienced staff at USPTO may help by giving the right answers to your questions about an office action. However, remember that they will not provide any legal advice. You can contact the experienced examining attorney or his supervisor to get in-depth answers to your questions. You can also contact the Trademark Assistance Center (TAC).

Responding to common refusals or requirements  

First, read the entire office action carefully and understand all the problems with your trademark application.

·      Write complete responses to all the issues and respond promptly (try to give the first answer).

·      Respond completely; contact us anytime for filing a timely response.

·      Prefer either to respond via email or call.

·      Get familiar with the rules and procedures of USPTO and be professional while responding.

Complex processes with varying levels of detail are tricky. As always, get professional legal advice, as in the end, their guidance saves time, frustration, money, and the unexpected.