An office action is issued by an examining attorney rejecting an application, as submitted, to register a Trademark. The response typically requires legal arguments and changes on the initial application. It is best to use qualified counsel when responding to an office action to ensure your company’s rights are protected.
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Elements of an Office Action
The first possible element is the category of “informalities”, matters such as an inadequate sample to show use of the mark, providing insufficient information with respect to the nature of the entity seeking the mark, or providing insufficient information for the examiner to determine the goods and services.
The second possible element of an office action is an actual basis for rejection of the mark itself. The most frequent bases are likelihood of confusion with an existing registered trademark or descriptiveness of the mark for which registration is sought.
Responding to an Office Action
When an office action is issued, the applicant has six months to respond to the Examiner. If an office action is issued with respect to “informalities”, a response may simply be the correction of these matters by providing additional information. If the action is premised on a defect in the mark itself, such as the likelihood of confusion or descriptiveness, the applicant will need to present evidence and legal arguments to overcome the USTPO attorney’s rejection.
If the Examiner is not convinced by the evidence submitted, a final office action will be issued. This may be appealed to the Trademark Trial and Appeal Board.
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