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  • Writer's pictureTodd

What is an Office Action?

Simply put, an Office Action is a statement from the USPTO that there is a reason they believe your mark should not be registered after examining it, so they are refusing registration, but giving you an opportunity to respond.

Office Actions can be as simple as requiring a disclaimer, which can often be remedied via phone call and an Examiner’s Amendment, to as complicated as a likelihood of confusion or descriptiveness refusal.

The USPTO may ask you to disclaim certain wording because it merely describes a quality, characteristic, feature, purpose, or use of the applicant’s goods. For example, if the word “BOTTLE” appears in your bottling company’s trade name, the USPTO may ask you to disclaim the bottle portion of your mark. What this means is you cannot claim an exclusive right to the term that others may need to use to describe their goods and/or services in the marketplace. The disclaimer does not physically remove the disclaimed portion of the mark, it just means you can’t claim an exclusive right to use the word BOTTLE apart from the entire mark, for example.

If your specimen fails to show the mark as used in connection with the goods and/or services specified in the application, you can also expect to receive an Office Action. You will be given the opportunity to produce a substitute specimen, along with an affidavit or signed declaration stating “The substitute specimen was in use in commerce at least as early as the filing date of the application.” In other words, your response to the Office Action can’t be a new specimen you just came up with after the fact.

You might get a likelihood of confusion Office Action also known as a section 2(d) refusal, that the applied for mark so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and the owner of the already registered mark. Hopefully, this one does not come as a surprise if you did a thorough search, and you have all of your arguments prepared and ready to go to rebut the Examining Attorney’s position.

Another example is a section 2(e)(1) merely descriptiveness refusal. Responding to this type of Office Action is going to take some time to research, and the response could very well be a lengthy brief.

TAF Legal can respond to Office Actions for you!

Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, let’s work together on your trademark needs


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