What’s an Office Action in a Trademark Case?

An Office Action is issued by an examiner for the United States Patent and Trademark Office (USPTO), rejecting an application to register a trademark. They typically include issues with “informalities”, like an inadequate sample to show use of the mark, insufficient information regarding the nature of the entity seeking the mark, or insufficient information for the examiner to determine what goods and/or services the applicant provides.

An Office Action could also provide an actual basis for rejection of the mark, usually because of likelihood of confusion with an existing registered mark and genericness or descriptiveness of the mark for which registration is sought.

You have six months to respond to an Office Action. If your problem is “informalities”, you may just have to correct the deficiencies and/or provide additional information. If the examiner takes issues with the mark itself, such as likelihood of confusion, genericness, or descriptiveness, you may have to provide facts and argument to overcome the rejection. If the examiner still doesn’t approve the mark, a Final Office Action (aka a filing refusal) will issue, which you may appeal to the Trademark Trial and Appeal Board.

Office Actions are formal legal proceedings with rules, procedures, and consequences, which must be observed and followed. If the PTO refuses or rejects your application, the U.S. Government will be represented by a trained trademark attorney whose entire job is trademarks, and lots of ‘em. It can take years to resolve an Office Action, but there may be options for resolving your issues registering your mark of which the Examiner may not be aware.

The primary issue with trademarks is the concept of “confusion”. The PTO is concerned with protecting consumers from being sold goods or services from someone they think is someone else. In other words, they want to make sure that your competitor isn’t tricking people into thinking that he’s selling your stuff.

Your response to an Office Action is a permanent and public record, and they can and will be used against you in a Court of law! It’s not that you shouldn’t say anything like in criminal court, but you may be “estopped” from claiming anything beyond the scope of your response. Accordingly, it may be best to avoid arguments that compare your mark to another mark and claim that your mark won’t cause confusion between the marks.

This is but a precis of a primer. For more information, see the Trademark Manual of Examining Procedure or contact a trademark attorney.

Aaron Thalwitzer is an attorney with Zies Widerman & Malek in Melbourne, Brevard County, Florida who practices civil litigation and intellectual property law.