What is a Trademark Office Action?

1. What is a trademark office action?

A trademark office action is an official communication from the trademark office, usually the United States Patent and Trademark Office (USPTO) or any national trademark registry, concerning a specific issue or concern with a trademark application. Essentially, it's a way for the trademark office to inform the applicant that there are certain problems or issues with the application that need to be addressed for the registration process to move forward. These issues can range from minor administrative fixes to more substantive matters relating to the nature of the trademark itself.

2. What happens if I don't respond to a trademark office action?

If an applicant fails to respond to a trademark office action within the specified timeframe (usually three months from the issuance date), their trademark application will be considered abandoned. This means the application will no longer be processed, and the applicant loses their filing date and the associated fees. If the applicant still wishes to secure a registration for the mark after abandonment, they would need to submit a new application, along with the associated fees. This can result in a waste of both time and resources, especially if the applicant has to start the registration process all over again.

3. Types of trademark office actions.

There are generally two main types of trademark office actions:

  • Complex Office Actions: These are refusals often based on substantive issues related to the trademark application. Some common reasons for complex office actions include:
    -Likelihood of confusion with an already registered mark or a prior pending application.
    -The mark being considered "merely descriptive" of the goods or services it represents.
    -The mark being seen as deceptive or misleading.
    -The mark being generic, and therefore not able to function as a source identifier
  • Administrative Office Actions: These actions are typically less severe and relate to non-substantive issues that can be rectified with amendments to the application. They can involve:
    -The need for disclaimers on certain parts of the mark.
    -Clarifications related to color claims.
    -Clarifications concerning the goods and services listed on the application.
    -Issues regarding the ownership details of the application.

4. How Markavo® can help?

When facing a trademark office action, it's essential to have experienced trademark attorneys on your side, and Markavo® is here to assist. Here's why choosing Markavo® is a smart decision:

  • Experience Counts: Markavo® attorneys have managed over 6,000 trademarks. With over 16 years of collective trademark experience, we've seen and addressed a multitude of office action issues.
  • Effective Responses: Our team has successfully responded to and overcome countless trademark office actions. We know how to navigate the nuances of trademark law and provide a comprehensive response to any challenge.
  • Transparent Pricing: For complex office actions, we usually respond for a flat rate fee of $399. For simpler, administrative refusals, our flat fee is just $125.

In the intricate world of trademarks, office actions can be a daunting hurdle. But with the right guidance, like that of Markavo®, they become just another step in the journey towards securing your brand's identity. Contact us or learn more about our trademark office action response service.

Aline Daza
Aline Daza

Customer Success

Oct. 13, 2023