Intellectual Property, Small Business

What is a Trademark Office Action?

March 15, 2019March 15, 2019
What is a Trademark Office Action?

A trademark Office action is bad news.  Literally, it is bad news in the form of a rejection letter from the U.S. Patent and Trademark Office (USPTO), essentially saying that your request for a particular trademark was denied.  Rejection can happen for a number of reasons, and the Office action from the USPTO may—or may not—get into the details.   

One thing is for-certain however.  If you apply for a trademark registration and receive an Office action in-return, you’re left with a rather limited number of options:

  1. Continue Operations without the Added Protections of a USPTO Trademark
  2. Change your Business Name and Re-Apply for the Trademark
  3. Consult an Intellectual Property Attorney to Contest the USPTO Decision

The third option here is likely the best.  As we’ll see in the following paragraphs, a federal USPTO trademark is a strong layer of protection for any business, especially those that plan to expand beyond their city or state.  Alternatively, changing your business name will almost certainly spell financial catastrophe for your operation.  

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If you apply for a trademark and receive an Office action in-return, an experienced lawyer will help prepare a response to the USPTO, and hopefully obtain the coveted USPTO trademark while retaining your brand name.  But why go through the trouble of trademarking your business name in the first place?

Why Should I Trademark my Business Name?

In reality, your business name is among your most valuable assets.  Like any other key asset, you’ll want to protect it from being stolen or used without your consent.  If your business’s reputation is important to your operations, then you should strongly consider trademarking your business name.  The time, money, and effort spent on building a trusted brand could be lost if another business-owner—either by-accident or purposefully—trademarks your business name (or a name similar to yours) before you do.  

Filing an application with the USPTO is the first step to obtaining strong, internationally-recognized trademark protections.  According to their government website, advantages to a USPTO trademark include:

  • Nationwide, exclusive, and legally-mandated rights to the trademarked name
  • Registration in the USPTO master database of trademarked names (so other business-owners will know of the existence of your trademark and avoid selecting a mark that is too similar)
  • The legal right to contest the misuse of your mark in a federal court
  • The right to record your trademark with the U.S. Customs and Boarder Protection to prevent importation of infringing or counterfeit foreign goods under your name
  • The right to apply for an international trademark in a number of partnering foreign countries
  • Registering your business name with the USPTO isn’t required.  However, the USPTO federal trademark greatly enhances a business-owner’s rights, protections, and autonomy over their brand name.  

The process of applying for a trademark is relatively simple and inexpensive, however there’s no guarantee that the USPTO will grant your requested trademark.  If you file for a trademark, and in-return receive an Office action from the USPTO denying your request, you’ll need to consult an intellectual property attorney for assistance.

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Receiving a Trademark Office Action

As we said earlier, receiving an Office action is literally bad news.  But fortunately, the USPTO’s decision isn’t always final.  The first step to refuting an Office action is to figure out why your request was rejected.  

The typical Office action consists of two elements: the informalities and the basis of rejection.  Depending on your application, your Office action will include either one or both of these sections:

A lengthy informalities section usually means that your application was incompletely filled out, or the information you provided was inadequate.  For example, when an applicant applies for a trademark, they are required to provide detailed information regarding the type of business, the partners involved, and the types of goods and/or services they provide.  If the applicant fails to convey, in detail, this information to the USPTO, the department officials can deny their request on account of the informalities.  

The second section, the basis of rejection, will describe why the application was denied.  If your application wasn’t rejected because of informalities, then it was likely the name itself that was the basis for denial. First and foremost, your requested name cannot already be trademarked by another business, nor can it be “too similar” to an already-trademarked name.  Likewise, your requested name cannot be too generic (like “The Bakery”) or overly descriptive (like “We Buy and Sell Teas, Coffees, Supplements, Oils, and other Things”).  These types of names are almost always denied. 

Consulting an Attorney and Responding to the USPTO

Upon receival of the Office action, you have a non-extendable six months to respond to the USPTO.  This response can be one of two things: 1) a forfeit of your request, or 2) a contention of the USPTO’s decision.  Either way, you’ll want advice from a legal professional.  

If your request was denied on the basis of informalities (in other words, missing information in your application), it may be as simple as supplementing the application and re-applying.  However, if your request was rejected because of your proposed name, you’ll need gather evidence and build a case to effectively argue this decision.  

In either instance, an intellectual property attorney will be of great assistance when drafting the response.  It’s important to keep in mind that you only have six months to respond to the USPTO decision (and, for trademarks, this window isn’t extendable).  An attorney will help decipher the jargon of the Office action, and if you decide to contest, will aid in building your case.  


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