Trademarks: the Ominous Office Action Letter
There are two general types of office action letters at the United States Patent and Trademark Office (USPTO) after filing an application for trademark registration: final and non-final. There are other types of office actions that could prompt your attention. An examiner’s amendment (e.g., a minor disclaimer) or a suspension letter when there are other prior, pending marks that conflict are two examples.
This blog entry will briefly discuss non-final office action letters that invite a response from the trademark registration applicant. A final office action raises a legal problem that the examining attorney has raised with the applicant on at least one other occasion. A final office action will give an applicant one final opportunity to respond during the application process. If the Office is satisfied with the applicant’s response, it will proceed to registration. If it is not, then the Office will deny the application; thereby giving the applicant an opportunity to appeal to the Trademark Trial and Appeal Board. The USPTO states that “applicants often file both an appeal to the TTAB and a direct response to the final office action.”
When an applicant receives such a letter, they should take a deep breath and relax. An applicant generally has to respond to non-final office action letters within six months from the date of the letter. The trademark examiners are often right about any deficiencies in the trademark application so any response has to be well considered and executed. The applicant must read the office action letter very carefully for deadlines and methods of responding because they are not all the same. Furthermore, since a non-final office action letter discusses legal issues with the application that generally go beyond minor problems handled in other office actions, the applicant will need to submit a response that thoroughly explains their position. This should involve clear reference to the case law and rules applicable to trademark registration. One resource attorneys use is the Trademark Manual of Examining Procedure (TMEP). It may be downloaded free of charge from the USPTO website at: http://www.uspto.gov/trademark/guides-and-manuals/tmep-archives. It covers so many of the possible issues that may arise in the registration process. It also provides case law support that can be very helpful in responses. The USPTO also offers a direct line of communication with the trademark examiner because the registration process is not adversarial after all. Picking up the telephone or shooting an email to the examiner can be helpful in resolving issues, usually the minor ones.
If the trademark registration process does not result in trademark registration, there is always the possibility of an appeal to the Trademark Trial and Appeal Board. The proceedings there function very much like a regular federal court proceeding, but they handle trademark ,matters: oppositions from other trademark registrants, cancellations, and appeals from denials, for instance. An applicant is better off resolving the legal issues during the registration process, but there is recourse if that is simply not possible. If registration is ultimately denied, a business may want to seriously consider an appeal because a trademark is one of the most, if not the most, valuable assets of any business.
 USPTO webpage on office actions, available at: https://www.uspto.gov/trademarks-maintaining-trademark-registration/responding-office-actions.