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Trademark Registration: What is an Office Action?

You may know about the importance of registering your trademark but do you know about Office Actions?



You may know about the importance of registering your trademark but do you know about Office Actions?

Everyone has heard the word "trademark" and has some degree of understanding of what it is and its importance in brand identity. Less know about the importance of registering trademarks with the United States Patent and Trademark Office ("USPTO"). Even less know and appreciate the importance of never receiving an Office Action after submitting a trademark application to the USPTO.


To sum it up, an Office Action is a not a "good" thing.


The best way to minimize chances of receiving one is to hire a trademark attorney to handle your trademark application from the beginning. Let's dive in!



What is an Office Action?


An Office Action is essentially an "official letter" from the USPTO.


In it, an Examiner from the USPTO lists legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the Office Action before the USPTO will register your trademark. There are different types of Office Actions.


Not all Office Actions are final. Meaning, you will have the opportunity to ask the USPTO to reconsider your application for registration by submitting a response.


The response must be carefully and tactfully drafted and address each ground of rejection and objection made by the Examiner. Often, case law analogies and citations are required for an effective argument to support your application to persuade the Examiner that your trademark should be grated registration.


Is there a deadline?


Yes!


The Office Action specifies the time period in which you must respond. In most cases, the USPTO must receive a response within three (3) months of the specified date. It is very important that the response is submitted within that timeframe to avoid abandonment of the application. You'd be surprised at how fast three months could go so don't wait to address it "later."


"If you do not respond by the response deadline, we will declare your application abandoned, the application process will end, and your trademark will fail to register." - USPTO

Should I hire an attorney to handle my Office Action?


Yes!


Responses to Office Actions can be very complex and require legal knowledge beyond that of a layperson. In addition to adhering to strict deadlines, each and every ground of rejection must be addressed in a methodical, tactful manner to maximize your chances of success.


In my nearly one and half decades of practice, I have seen horribly and hilariously drafted responses to Office Actions which were submitted by individuals who chose not to hire attorneys. The end result has always been a waste of time and often the final refusal of registration. Accordingly, while you "may" be able to submit a response to an Office Action, I do not recommend it.


What to do if I receive an Office Action?


  1. Stay calm. You may still have a good chance at registering your trademark.

  2. Contact an attorney who has vast knowledge of Trademark Law.

  3. Let the attorney handle the Office Action for you.

  4. If you cannot hire an attorney, do your best to maximize your chances at registration by doing your research and addressing all grounds of rejection.


Let's recap: Why is trademark registration important?


A trademark can help you distinguish your products or services from those of your competitors, and it can also give you a legal weapon to fight against infringement. Although the process of applying for a trademark can be complex and time-consuming, it is worth the effort to safeguard your brand identity. Additionally, you can sell or license your trademark for additional revenue.


Disclaimer: Not legal advice. Intended to be used for informational purposes only. You're welcome to schedule a consultation to obtain legal advice specific to your needs.





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About Ankhi-Krol Law

Ankhi-Krol Law is a boutique law firm located in the heart of New York City. Founded in 2012, Ankhi-Krol Law has become a leading legal service provider that caters exclusively to the needs of start-ups, small businesses, and entrepreneurs all over the country. 


The firm's areas of practice are: Business, Contract, Trademark, and Copyright laws.


Shahrina Ankhi-Krol, Esq. has been selected as a Rising Star Super Lawyer for eight (8) years. It is a recognition given to no more than 2.5% of attorneys in each State, each year. 


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