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What Do I Do If I Get an Office Action from the USPTO?

If you’ve received an office action notice from the U.S. Patent and Trademark Office (USPTO) after filing an application to protect your intellectual property, then you may be wondering what this means, what you should do next, and how best to proceed.

First of all, it is important to note that it isn’t uncommon to receive an office action notice, and that in most cases this doesn’t mean that your application has been denied or that you’ve reached a dead end. Rather, these official communications are typically used to seek out more information about your application for a trademark or patent.

When you send in an application, an examining attorney will review your request for a trademark and if they find any problems or issues which need further clarification, they will issue what is known as an “office action.”

Right on the first page of the office action, you will be able to determine whether the action is final or non-final, the main difference between them is that a non-final office action is able to be amended or have additional arguments made without having to file any further fees. Subsequent pages of a non-final office action will detail the problems with your patent or trademark application and will require a formal written response, whereas a final office action is issued when an applicant fails to address or overcome some or all of the issues raised previously.

A non-final office action will undoubtedly delay your application process, because the process cannot move forward without receiving a response from the applicant or their trademark attorney. Sometimes the problems raised in an office action are simple fixes, even things like typos or clarifications, which are relatively simple to address, but others will raise issues requiring more complex legal arguments about how your patent or trademark differs from others. Above all, you must be sure to address all of the objections raised by the examining attorney or you will likely receive a final office action denying your application for failure to address some outstanding issues.

In order to respond, the USPTO recommends filing a response electronically through their Trademark Electronic Applications System (TEAS), but you can also submit responses by fax or regular mail. The response should not only address all the issues raised but also contain the applicant’s name, mark, serial number, law office, and examining attorney in the body of the response. And while the deadline to respond is typically six months, you should not wait until the end of the six-month period to respond to an examining attorney’s office action. These filing deadlines are set by law, which means if you miss the deadline then your application will be considered abandoned. In order to revive an application, you would then need to file a petition and the associated fee to do so.

It isn’t always a simple and straightforward process to apply for a trademark or patent, particularly if you are doing it alone rather than using the services of an experienced intellectual property attorney to help you avoid these pitfalls. Whether you are just starting the application process or trying to determine how to respond to an office action notice, it is much more efficient to hire a trademark attorney to get the help you need and allow the process to go as smoothly as possible as you seek to get your trademark officially registered.

It’s hard to deny the importance of protecting the intellectual property of your business and it’s important to realize that avoiding costly mistakes or unnecessary delays will allow you to get back to what matters most for your business.

The team of intellectual property lawyers at Fears Nachawati can explain every aspect of the trademark process and also help identify which other aspects of your business or idea are most in need of protection.

Don’t wait to legally protect your intellectual property. Schedule a free case evaluation with a member of our team by calling at (866) 705-7584, or by visiting the offices of Fears Nachawati located throughout the great state of Texas, including in Houston, Dallas, Austin, Fort Worth, and San Antonio.

Intellectual Property