Office Actions
Office actions are letters from the USPTO that set forth the legal
status of a trademark application. They are issued by trademark
examining attorneys who are assigned to each application. There
are several types of office actions: examiner’s amendments,
priority actions, non-final office actions, final office actions,
and suspension letters. Please read below for a definition of each
type, as well as information on how to respond to them.
Types of Office Actions
- Examiner’s Amendment
An examiner’s amendment is a written confirmation of an amendment
made to an application. The trademark examining attorney assigned to
the application will make the amendment after consultation with an
applicant or the applicant’s attorney. The examiner’s amendment
is merely a written confirmation of the agreement between the examining
attorney and the applicant as to the amendment, and it is also a notice
that the amendment will be made. The applicant need not respond to
the examiner’s amendment unless the applicant wishes to make
further changes to the application.
- Priority Action
A priority action is a letter in which an examining attorney sets forth
specific requirements that the applicant must meet before an application
can be approved for publication. An examining attorney will issue a
priority action after consulting with an applicant or the applicant’s
attorney. Unlike an examiner’s amendment, the priority action
does not confirm resolution of the issues; instead, it explains the
requirements still outstanding.
The applicant must respond to a priority action
within 6 months from the date the priority action is mailed.
If the applicant fails to do so, the application will be declared
abandoned. Please note that examining attorneys have no discretion
to extend the time for filing a response to an office action.
The benefit of a priority action is that, if the
applicant responds within 2 months, the application will be given
priority in processing.
-
Office Action
An office action is a letter in which an examining attorney sets
forth the legal status of a trademark application. In such a letter,
an examining attorney will inform an applicant if the search of the
Trademark Register yielded any conflicting marks. The examining attorney
will also send an office action to issue substantive refusals to
registration (such as a likelihood of confusion, mere descriptiveness,
etc.) that arise, as well as to make any procedural requirements.
Applicants must respond to an office action within
6 months from the date the office action is mailed. If applicants
fail to do so, their applications will be declared abandoned.
Please note that examining attorneys have no discretion to
extend the time for filing a response to an office action.
There are two types of office actions: non-final
and final. A non-final office action raises new issues and
usually is the first phase of the examination process. An examining
attorney will issue a non-final office action after reviewing
the application for the first time. If a new issue arises after
the applicant responds to the first non-final office action,
the examining attorney will issue another non-final office
action that sets forth the new issue(s) and continues any that
remain outstanding. A final office action is the last office
action that an examining attorney issues. It makes “final” any
outstanding issues. An applicant’s only response to a
final office action is a) compliance with the requirements
or b) appeal to the Trademark Trial and Appeal Board.
-
Suspension letters
A suspension letter suspends the action on an application. An application
may be suspended for a variety of reasons. These include waiting for
the disposition of a cited prior pending application to be determined
or waiting for an assignment of ownership to be recorded. Applicants
do not have to respond to suspension letters.
How to Respond to Office Actions
There is no set form or required format for responding
to an office action. Applicants should address each issue raised
by the examining attorney. Applicants should also be sure to include
the applicant’s name, mark, serial
number, Law Office and Examining
Attorney in the body of the response.
Reponses to office actions must be received within 6 months
from the mailing date on the office action. There are no
extensions to this deadline. Examining attorneys have
no discretion to extend the time period for filing. If
applicants do not submit a timely response to an office action,
their applications will be declared abandoned.
Responses to office actions may be submitted online using an electronic
form through TEAS
(Trademark Electronic Application System), and by facsimile
or regular mail.
Under 37 C.F.R. §2.197, facsimile correspondence
will be considered to be timely filed, even if received after
the due date, if the correspondence is:
(1) transmitted to the Office by
facsimile on or before the due date; and
(2) accompanied by a certificate attesting
to the date of transmission. 64 Fed. Reg. 33056, 33063
(June 21, 1999).
The following wording is suggested for the certificate of transmission:
I hereby certify that this correspondence is being transmitted
by electronic mail to the United States Patent and Trademark
Office on the date shown below.
(Typed or Printed Name of Person Signing Certificate)
(Signature)
| [Please note that if this (signature) is part of the actual
message and not a previously signed document that has been
attached as a jpg file, it must also be signed
electronically using the same format accepted for electronically
filed applications - the signatory must enter any combination of
alpha/numeric characters that has been specifically adopted to serve
the function of the signature, preceded and followed by the forward
slash (/) symbol. Acceptable "signatures" could include:
/john doe/; /jd/; and /123-4567/.] |
(Date)
>>
See TMEP
Chapter 700 for more information |
=online
business system 
=fees 
=forms
=help 
=laws/regulations 
=definition
(glossary)