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.
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ou le a trademark application with the United States
Patent and Trademark Ofce (USPTO) and patiently wait
for the registration certicate to arrive. Instead you get
a notication that the examining attorney has refused to
register your client’s trademark. What went wrong?
The answer could be nothing. Ofce 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 ofce 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 Ofce Action
The rst and most important step to take after receiving an
ofce action is to docket the response deadline. A response
addressing all of the issues raised in the ofce action must
be led by this date. The deadline is six months from the
issue/mailing date of the ofce action.2
For applications that are led directly with the USPTO,
the issue/mailing date is typically the date the ofce action
was sent by email to the correspondent of record. It appears
in red text in the ofce action.
By Kelu L. Sullivan
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 ofce action was sent to WIPO.3 And for an ofce 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. 03, 2019 IB-1rst Refusal Note
Nov. 12, 2019 Filing Receipt Trademark
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
ofce 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 ofce
action is not extendable.4
Deciding When to Respond to Nonnal Ofce Actions
The sooner an applicant responds to an ofce 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 benecial 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 ofce 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 benecial to
delay responding to see if the cited registration is maintained.