Responding to an Office Action – Trademark Application Rejected

Elliott Stapleton Trademark

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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About the Author

Elliott Stapleton

Elliott is a partner in the firm of Cornetet, Meyer, Rush and Stapleton serving clients throughout Ohio. Elliott's business clients range from small single member companies to large privately-held businesses. CMRS Law provides legal services which include advice on Business Formation and Transactions, Real Estate Transactions, Trademark Law, Copyright Law, Estate Planning, Trust Administration, Probate Administration, and Succession Planning. CMRS Law serves clients at two locations: 123 Boggs Lane, 1st Floor, Cincinnati, Ohio 45246 and 2101 Grandin Road, Suite A, Cincinnati, OH 45208