What are office actions?

An Office Action is an official letter from the Trademarks Office. In this letter the Trademarks Office lists problems with your trademark application. You must respond to an office action. If no response is filed, your application will be abandoned.

You have 6 months to respond (in the US no extension is possible, in Canada you can get a 6-month extension of time). In your response you have to explain why your trademark should receive registration and you have to address the objections listed in the office action.

Administrative (non-substantive) office actions

An administrative office action can usually be overcome by providing additional information to the Trademarks Office or by making revisions to your application or to the statement of goods and services.

Administrative rejections typically include:

• Wrong specimens (the photos you submitted showing your trademark in use)
• Vague or unclear identification of goods and services
• Wrong classification of goods and services
• Providing wrong entity type of the applicant
• Missing disclaimers
• Missing translation or not providing trademark meaning
• Missing signature in the application

These objections are fully covered by our ALL IN and BELLS AND WHISTLES packages. 

Complex (Substantive) office actions

A substantive office action may include descriptiveness or likelihood of confusion issues.

Descriptiveness issues arise when your trademark describes, mis-describes or provides a deceptive description of an ingredient, quality, characteristic, function, feature, purpose or use of the identified goods or services.

Generic refusals arise when your trademark names the products or services in your application. These are usually very difficult or impossible to overcome.

A likelihood of confusion rejection is when the Trademarks Office considers your trademark confusingly similar to an earlier filed trademark application or registered trademark. Your office action letter will list the marks that your application is confusingly similar to. Such a rejection usually requires a long and well-thought out response and/or planning of a strategy.

Arguing against disclaimers. If Trademarks Office requests a disclaimer and you would like us to submit an argument against entering a disclaimer, it will also be considered a substantive response.

The substantive objections are fully covered by our BELLS AND WHISTLES package.

 How can you avoid getting an office action?

• You can never be completely certain that no office action be received. However, a risk of getting an office action can be minimized.
• The best way to minimize a risk of getting a substantive (confusion or descriptive) objection is to do a proper trademark search.
• If a conflicting mark is found, the trademark name may be adjusted or completely changed. Additionally, the description of goods and services can be adjusted to avoid any overlap with the conflicting mark.
• To minimize a risk of getting an administrative objection, the trademark should be filed using proper specification of goods and services. If specimens of use are submitted with filing, they should properly show use of the trademark. Translation and meaning of the trademark should also be provided at filing.

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