If you’ve filed a trademark with the USPTO, you it’s become very likely that you’ve been hit with a “Nonfinal Office Action” after the Examiner looks at your trademark.
What does this mean?
Do you have to respond?
What types of office actions are there?
Here’s a quick rundown of the most common USPTO Office Actions and the hurdles they pose:
What is a Nonfinal Office Action?
An office action is an official letter sent by the USPTO’s Examining Attorney, e.g. the person who looks at your trademark application. In it, the Examining Attorney lists any legal problems with your application and/ or your applied-for trademark.
Do I have to respond to a Nonfinal Office Action from the USPTO?
Yes. You must respond to an office action from the USPTO (i) within six (6) months for any office actions issued before December 17, 2021, OR (ii) for office actions issued after December 17, 2021, within two (2) to six (6) months from the issuance of the office action as set by the Examiner.
Failure to respond adequately to all points noted in an office action means your trademark application will be denied.
Note: Why the change of timelines? The Trademark Modernization Act, which authorizes Examining Attorneys to set a much shorter response period, goes into effect December 17, 2020. It authorizes shorter office action response times, anywhere between two (2) months and six (6) months from the Office Action issuance date. If needed, an applicant may request to extend the shortened response deadline.
What types of Nonfinal Office Actions are there?
There are a plethora of office actions that the USPTO Examiner may issue. Some of the more common office actions include:
- Specimen Refusal. The specimens submitted with the application either (i) are of the wrong type, or (ii) do not show the applied for mark in connection with the goods and services claimed by the trademark application.
- Disclaimer Required. If a part of the trademark is “generic” or “descriptive” of the underlying goods or services, the USPTO will require the applicant to “disclaim” the exclusive rights to that specific word in order to allow the rest of the trademark application to proceed.
- Legal Entity Errors. The legal entity noted in the application does not match the actual nature of the business entity. Typically, this is a clerical error or confusion on the part of the applicant.
- Liklihood of Confusion / 2(d) Refusal. Here, the trademark examiner has searched the USPTO database for registered trademarks and discovered trademark(s) whose (i) sight, sound, and meaning are similar to the applicants, and (ii) who are claiming a similar set of goods/services to the applicant’s so as to (conceivably) cause consumer confusion between the two marks. Therefore render the newly applied for trademark is inadmissible unless the applicant can argue otherwise. This is a “big deal,” and really requires a strong legal argument to overcome.
- Descriptiveness Refusal / 2(e) Refusal. The applied-for trademark is too descriptive of the underlying good or service, and can’t be disclaimed. This office action issues when trademark merely describes the nature of the goods/services claimed in the application, and is therefore not sufficiently distinct to function as a trademark. Example: “Purple Juice” for beet juice would be considered descriptive because it simply describes the product.
How do I respond to the Nonfinal Office Action?
You will need to file a response using the TEAS “Response to Nonfinal Office Action” form linked here: https://www.uspto.gov/trademarks/apply/response-forms. You must respond to ALL issues raised in the Nonfinal Office Action in your response.
Some responses need only quick corrections. Others require full-blown legal arguments to overcome.
What if my response is rejected?
If your response to the Nonfinal Office Action is denied, the USPTO will issue a “Final Office Action.” This means that they have rejected your mark. You may file a request for reconsideration and/ or an appeal if you wish to continue to fight for your proposed trademark, however, there are very specific timelines in which you must do so.