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WHAT IS A TRADEMARK OFFICE ACTION?

July 1, 2019

Once a trademark application is filed, it takes about three and a half to four months to hear back from the United States Patent and Trademark Office. The examining attorney responsible for your application will issue either one of three responses.

The first possible response is that your trademark application will be approved for publication. Publication means that your application will be published in the Trademark Official Gazette (TMOG), where your mark will be subject to opposition for 30-days.

The second possible response is that you will receive an Office Action, which means that your application has been rejected. There are two types of Office Actions. The first is called a non-substantive office action, where the examining attorney will request a minor change or amendment to be made to your application. You will be given six months to submit these changes to the USPTO examining attorney.

The third possible response is the second type of office action, where the examining attorney completely rejects your mark and does not allow your mark to register on statutory grounds. This is called a substantive office action, where you (or me as the attorney) will be permitted to respond to the examiner with arguments and evidence in favor of registration within six- months of the mailing date of the office action.

Substantive office action responses typically require significant research, case law citations, and a legal brief to be written to provide your application with the best possible chance of being accepted by the USPTO examining attorney. A substantive office action is best handled by an experienced attorney for the above reasons.

For more information on how to respond to a trademark office action or to work with me directly, click on the link below.

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