Many people are under the mistaken impression that once they file their trademark registration for their equine business, it is automatically approved by the United States Patent and Trademark Office (USPTO). That is not the case. The USPTO can deny the trademark for many different reasons. Some are simple and easy to fix, and some are substantive. What is an office action, and what should you do when you get one?
What is an Office Action?
The USPTO considers many factors when determining whether a trademark should be approved for registration. The foundation of those factors is that the trademark must not cause confusion in the marketplace. If the USPTO has a problem with the trademark application, anything from a description it feels needs to be corrected to the likelihood that the trademark will cause confusion the marketplace because of another trademark already registered, it will issue an office action. An office action is the USPTO’s refusal to register the trademark. In this document, the examining attorney handling the matter will explain the reasons for the refusal. The applicant has six (6) months to respond to the office action.
Simple Office Action
You may receive a simple office action, which means that something relatively minor has to be corrected. This might mean you have chosen the wrong class for your trademark, an additional class is needed, or even something that may seem minor, such as a comma in the wrong place. It may not seem like a big deal to you, but it is to the USPTO examining attorney. The correction must be made or the trademark will not be registered.
Substantive Office Action
A substantive office action shows that the examining attorney at the USPTO has a real problem with your trademark. These kind of office actions should definitely be handled by a trademark attorney because a trademark attorney is familiar with the process and appropriate responses. Many substantive office actions concern the issue of confusion in the marketplace, which is called a 2d refusal. A response to this type of office action requires knowledge of the thirteen (13) factors considered by the USPTO, called the DuPont Factors, as well as relevant case law. A response to this type of office action is similar to going into court to make an argument, only it is written and is submitted electronically. The first thing the trademark attorney will do is analyze the possibility of overcoming this kind of refusal. Unfortunately, it’s not always possible to get a trademark approved. A trademark attorney will let you know your chances and then discuss how you would like to proceed. Although you have six (6) months to file an answer to an office action, you should contact an attorney as soon as possible because it may take awhile to craft an appropriate argument.
If you have received an office action, please contact me to talk about responding to the action.