Responding to Trademark Office Actions

• Author: By Kelu L. Sullivan
• Pages: 14-19

Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Y

ou le a trademark application with the United States

Patent and Trademark Ofce (USPTO) and patiently wait

for the registration certicate to arrive. Instead you get

a notication that the examining attorney has refused to

register your client’s trademark. What went wrong?

The answer could be nothing. Ofce actions are routine

communications from the USPTO that cover a variety of

issues. Some of these issues are easily resolved by a phone

call with the examining attorney and the issuance of an

examiner’s amendment.1 Other issues present more seri-

ous obstacles to the registrability of your client’s trademark

and may result from complications that were not even

apparent at the time you led the application.

Your decisions about how and when to respond to a

trademark ofce action can greatly impact your chances of

successful registration, as well as the scope of your client’s

eventual registration. Below are some tips and checklists for

successfully responding to common situations in which the

examining attorney issues a refusal to register a trademark.

Deadline for Responding to an Ofce Action

The rst and most important step to take after receiving an

ofce action is to docket the response deadline. A response

addressing all of the issues raised in the ofce action must

be led by this date. The deadline is six months from the

issue/mailing date of the ofce action.2

For applications that are led directly with the USPTO,

the issue/mailing date is typically the date the ofce action

was sent by email to the correspondent of record. It appears

in red text in the ofce action.

Responding

to

Trademark

Office

Actions

By Kelu L. Sullivan

OFFICE ACTION

STRICT DEADLINE TO

RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADE-

MARK APPLICATION, THE USPTO MUST RECEIVE

APPLICANT’S COMPLETE RESPONSE TO THIS

LETTER WITHIN 6 MONTHS OF THE ISSUE/MAIL-

ING DATE BELOW. A RESPONSE TRANSMITTED

THROUGH THE TRADEMARK ELECTRONIC APPLICA-

TION SYSTEM (TEAS) MUST BE RECEIVED BEFORE

MIDNIGHT EASTERN TIME OF THE LAST DAY OF

THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 2/12/2019

For applications that are led through the World Intellectual

Property Organization (WIPO) and designating the United States

under § 66(a) of the Trademark Act, the issue/mailing date is the

date the ofce action was sent to WIPO.3 And for an ofce action

in a § 66(a) application, the issue/mailing date is the create/mail

date of the “IB-1rst Refusal Note” shown below on the USPTO’s

Trademark Status and Document Retrieval (TSDR) system.

Create/Mail Date Document Description

Dec. 19, 2019 IB-Processed Transaction

Dec. 03, 2019 IB-1rst Refusal Note

Nov. 12, 2019 Filing Receipt Trademark

Application

Nov. 07, 2019 Offc Action Outgoing

Nov. 07, 2019 XSearch Search Summary

Nov. 07, 2019 XSearch Search Summary

Nov. 07, 2019 Notation to File

Oct. 31, 2019 Application

In the above example, the examining attorney uploaded the

ofce action on November 7, 2019, but it was not mailed to

WIPO until December 3, 2019. The deadline to respond is

thus June 3, 2020. The deadline for responding to the ofce

action is not extendable.4

Deciding When to Respond to Nonnal Ofce Actions

The sooner an applicant responds to an ofce action, the

sooner the USPTO will consider the response and decide

whether the application is ready for publication for opposition.

So, should you respond immediately? Not necessarily. There

are many situations where it is benecial to delay responding

until closer to the deadline. Examples include the following:

The application is based on intent to use under § 1(b), and

the applicant will not start using the mark for at least one

year. In this situation, you may want to delay your response.

Doing so will delay the eventual issuance of a notice of

allowance. This could save the applicant from having to pay

for extensions of time to le a statement of use.

The ofce action raised a likelihood of confusion issue

under § 2(d) and the cited registration has a maintenance

deadline in the next six months. Here, it may be benecial to

delay responding to see if the cited registration is maintained.