What is a Trademark Office Action? - Daniel Ross & Associates

If you’ve applied for a trademark and you’ve received a notice about an “office action,” there are a few possible reasons why. But first, let’s talk about what an office action is.

What is an Office Action?

An office action is essentially a letter or a notice from the Examiner from the USPTO that there’s an issue with your trademark application. It could be administrative, or it could be legal, and there are different ways to handle each. Sometimes the office action can contain both in one.

Administrative Issues with Trademarks

Administrative issues are usually more straightforward Most often, administrative issues require a change of information or updated documentation within the application – for example, an updated description of the goods and services, a specimen of use that doesn’t match your drawing, or missing ownership information.

Legal Issues with Trademarks

Legal office actions come during the legal analysis, and they can potentially bar you from registration – common examples of legal rejections include a likelihood of confusion conflict, or descriptiveness or genericness refusals. These issues will require a legal memorandum and a legal argument in response to the office action. They’re usually more complicated, and if your office action is legal in nature, it might be best to consult with a trademark attorney.

Learn More About Your Trademark

If you are applying for a trademark, it is always best to consult with an attorney to ensure the quickest and most effective processes. To schedule a free consultation to discuss your trademark needs, please call (216) 307-5590, or get in touch using our online intake form.

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