If you’re reading this, you probably just received an email from the US Patent and Trademark Office notifying you that your trademark application has been issued an “office action.” Now you’re trying to figure out what exactly an office action is and what you need to do to respond to it. Stay with me here: we’ll cover both those questions and more, including whether or not you should consider getting legal help for responding.
Let’s start with explaining what an office action is. From there, we’ll look at the different types of common office actions. Then I’ll share what kind of fee range you should expect, at least in working with my firm. We’ll finish with best practices for responding to an office action.
Related: Trademark Registration FAQs
What Is A Trademark Office Action?
Put simply, when the Trademark Office issues an office action, it is objecting to your trademark application. It could be objecting to a small issue or to a large issue. It also could be objecting for more than one reason. All of this information can be found in the office action itself, but not all of it will be easy to grasp for the untrained eye.
If you received a nonfinal office action, that means you have an opportunity to respond and attempt to persuade the Trademark Office to withdraw the objection or objections to your application. I’ll revisit the best approach to take in responding later in this post.
What Are Common Trademark Office Actions?
There are a number of reasons the Trademark Office issues office actions. The two I’ve focused on in most detail below are “likelihood of confusion” and “descriptiveness” given how common they are and given the significant threat they pose to obtaining registration of your trademark.
Likelihood of Confusion
A likelihood of confusion objection is issued when the examining attorney determines that at least one other already registered mark is similar enough to yours that the two could be confused by a consumer. For instance, if your trademark and another registered trademark have a very similar name, the examining attorney might decide this could cause confusion. This is much more likely to occur when your trademark is similar not just in appearance with another registered mark, but also in the type of goods or services provided by you and by the owner of the registered mark.
Example: Your trademark is “Kablurg” and you’re seeking registration for a home fitness app. The examining attorney issues an office action based on likelihood of confusion with “Cablurgg” a Peleton-like stationary bike designed for home exercise use.
Overcoming a likelihood of confusion objection may be possible, but to do so will almost surely require citation to relevant trademark authority and reasoned argument distinguishing the trademarks, skills that the average trademark applicant lacks. This is an office action where hiring an experienced trademark to prepare the response gives you a much better chance of overcoming the objection.
A mere descriptiveness objection is issued when the examining attorney determines that your trademark merely describes the goods or services you provide. In other words, the average consumer would understand your trademark merely to refer to a feature, characteristic, purpose, or function of your goods or services. Generally speaking, the Trademark Office doesn’t permit registration of trademarks that just describe a product or service. To be eligible for registration, the trademark has to indicate the source of origin of the goods or services.
Example: Your trademark is “Floral Arrangements” and you sell floral arrangements. This merely describes the goods/services and will be objected to based on mere descriptiveness.
As with “likelihood of confusion” overcoming a mere descriptiveness objection may be possible, but the skills needed to craft an effect response are not widely held. There may be other routes to consider with this particular objection as well, which a trademark attorney can suggest, including claiming that the trademark has “acquired distinctiveness.”
There are many different bases for receiving an office action. A few examples are listed below, but there are plenty of others you could receive. Some (though not all) of these may be easier to respond to than those listed above, but if you have any doubt after reading the office action, you’d be wise to speak with a trademark attorney.
- Specimen refusals (i.e., the “specimen” you submitted showing an example of the trademark as you use it is refused for some reason)
- Class refusals (i.e., your trademark was determined to be ineligible in one or more of the trademark classes you sought registration in)
- Disclaimer (i.e., you’re required to disclaim exclusive rights to some component of your trademark)
- Goods or services description (i.e., the description you provided in one or more classes is indefinite, too broad, or otherwise unacceptable)
- Surname refusals (i.e., when your trademark is primarily merely a surname)
- Geographic descriptiveness (i.e., when your trademark describes the geographic source of origin of the products or services)
Related: Dealing With A Geographic Descriptiveness Office Action To Your Trademark Application
How Do I Respond To A Trademark Office Action?
Regardless of the reason(s) why your application received an office action, the first and most important thing in responding to an office action is to be timely. Trademark applicants are given 6 months to submit a response to an office action. This may seem like a long time, but it’s easy to put this off. If you plan to have a trademark attorney prepare the response, you should start contacting attorneys within at least a few weeks of the office action so that you can have a concrete plan for submitting a response well in advance of the deadline.
Note: Under the Trademark Modernization Act of 2020, which was enacted on December 27, 2020, the Trademark Office is expected to propose regulations allowing office action responses deadlines to be set for less than 6 months, though not less than 60 days.
The next thing to decide is whether you will submit a response yourself or hire a trademark attorney to do it for you. If you prepared and filed the trademark application on your own, you might be tempted to submit a response to the office action yourself as well. While this can be OK for certain types of office actions (for instance, where the examining attorney has required a disclaimer to be added), it’s usually inadvisable to do unless you have a fairly sophisticated understanding of trademark law. This is particularly true for substantive office actions like “likelihood of confusion” and “mere descriptiveness.”
An effective response to a substantive office action will include citations to relevant case law and reasoned legal arguments in an attempt to overcome the objection from the Trademark Office. This response is effectively a legal brief. Most non-lawyers will simply not have the knowledge, the resources, or the training to do this in a way that’s likely to yield a positive outcome. Put bluntly, the DIY approach is rarely effective in responding to an office action, especially a substantive office action.
How Much Will I Pay For Help Responding To A Trademark Office Action?
Legal fees vary in this area. Usually the biggest factor is the complexity of the office action, as that will dictate how much time a lawyer will need to spend researching the issues and preparing an effective argument. Having said that, the average legal fees for responding to a trademark office action for clients of mine often fall in the $750-$1,000 range, with outliers both below and above the average range, depending on complexity. Fees charged by larger firms may be significantly higher.
Receiving a trademark office action puts your trademark application in jeopardy. However, it isn’t necessarily insurmountable. Enlisting the help of a good trademark attorney can make the difference between overcoming an office action and receiving a final refusal.