TMIN News: Response to Office Action


Part 14 of Trademark Information Network Series

Published on Apr 20, 2017

This video provides an overview of the most common type of USPTO Office action: a non-final Office action issued by a USPTO examining attorney. In the video, you will learn how to respond to an Office action, as well as ensure that you receive all communications from the Office. Be aware that a failure to timely respond to an Office action will result in the abandonment of your application. Specifically, the application process will end and the trademark will not register; filing fees are NOT refunded when applications abandon.

 

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TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello everyone. And welcome to another Trademark Information Network Special Report. In this segment, we'll discuss what you need to know about responding to the most common type of USPTO Office Action: a non-final Office Action issued by a USPTO examining attorney. For information on how to respond to other types of Office Actions, review your Office Action carefully and follow the response link to access the appropriate form.

Before we take a closer look at the actual form for responding to a non-final Office Action, let's go over a little background. We can use one of the Trademark Timelines found on the USPTO.GOV website for reference.

Approximately three months after you submit your trademark application, a USPTO examining attorney will review the application.

If the examining attorney determines that the mark cannot be registered or that certain requirements have not been met, the attorney will issue a letter, also known as an Office Action. The Office Action identifies any problems with the application and gives you an opportunity to address or correct them.

As you can see from the timeline, you usually have 6 months from the issue date to respond to the letter. Sometimes the deadline is shorter, though, so be sure to double-check your Office Action. If you do not submit a timely response, your application will go abandoned, meaning that the application process has ended and your mark will not register.

For more information on Office Actions, visit the USPTO's webpage that explains the different types of communications you may receive.

If you signed up for electronic communication with the Office, you will receive an e-mail notifying you that an Office Action has been sent.

Note that the e-mail will be from an ECom@uspto.gov address. Keep an eye out for the e-mail so that you don't mistake this important notice for junk mail or spam.

To see the letter, simply click on the provided link. Or, in the alternative, you can access the letter directly from the USPTO website by entering your serial number in the Trademark Status and Document Retrieval system, known as TSDR. The system contains electronic copies of everything in your file, including your most recent Office Action.

Be sure to check the "Practice Tips" in the Trademark News & Notices portion of the USPTO website to learn how to ensure that you receive all USPTO emails.

Note that you may list up to 5 e-mail addresses, with one designated as the primary address for correspondence purposes, and the others for receiving courtesy copies.

And remember, the Office prefers electronic delivery to paper, so the USPTO will mail a paper copy of the Office Action only if you did not authorize e-mail communication with the Office.

Regardless of whether your Office Action is sent electronically or on paper, the best way to respond for faster and more efficient processing is the Trademark Electronic Application System, or TEAS, T-E-A-S. TEAS has a specific electronic form called the "Response to Office Action" form that you can use to respond to the Office Action. It's all available through the USPTO.GOV website.

Before responding, however, remember that it is very important that you read the entire Office Action. I know it can look overwhelming, especially with all the legal citations and legal words, but the Office Action tells you the legal problems with your application and provides you with the legal reasoning supporting any refusals and requirements.

When possible, though, the Office Action will give you examples and suggestions of ways to overcome certain refusals and fulfill outstanding requirements, so be sure to keep an eye out for them.

Your response must cover each and every point raised in the Office Action. After you take the time to really read and understand the issues, if you're still having trouble, feel free to call or e-mail the assigned examining attorney. The examining attorney can't give you legal advice, but you can discuss the issues to make sure you understand them and, in some cases, maybe even resolve most or all of the issues over the phone. Contact information for the examining attorney is found at the end of the Office Action.

Instead of representing yourself, you may want to hire a private trademark attorney to prepare your response. To find a private attorney specializing in trademarks, you may want to consider an Internet search, consult your local telephone listings, or contact the attorney referral service of a state bar or local bar association. The Office cannot aid you in the selection of an attorney. And keep in mind: if you hire an attorney, the Office will communicate only with that attorney.

It is possible that you may receive direct solicitations from private attorneys offering to prepare your response for you. These attorneys know you received an Office Action because they can view your contact and application information at the USPTO website; such information is public once you file an application. The USPTO has no role in these solicitations and the decision to hire an attorney is up to you.

Once you've read and understood the Office Action, it's time to respond. So, let's take a look at the TEAS Response to Office Action form.

Essentially, it's a two-step process to create and complete the Response to Office Action form.

Step one is checking the appropriate boxes for every issue in your Office Action. And step two is actually filling out the Response to Office Action form.

Make sure to address all of the issues listed in your Office Action. If you skip one, the examining attorney will be forced to send a Final Office Action.

You must respond to each and every point that the Office Action raises. Even if you agree with everything the examining attorney has required, you must explicitly state any appropriate arguments and manually enter any changes you want made; you should not simply submit a response that consists only of your signature.

The Response to Office Action form has a detailed set of instructions, so be sure to follow them.

The form includes helpful explanations, as well as links that explain particular concepts.

If you have questions about the content of the Office Action, use the contact information at the end of the Office Action to contact your assigned examining attorney. If you run into technical problems when using the form, contact the TEAS Support Team by e-mailing TEAS@uspto.gov.

And, as we conclude this report, keep in mind the following items:

Every 3 to 4 months, you need to check the status of your application on the on-line TSDR system, using your application serial number. You can also call 1-800-786-9199 to learn the status of your application. Checking your status regularly will ensure that you haven't missed or overlooked any deadlines or communications from the USPTO. If there was any recent activity in your case, you'll see it in the system and you can easily view or download the communication.

Be sure to wait 48 to 72 hours after receiving your e-mail notice that an Office Action has issued before attempting to respond. This allows the USPTO time to upload the Office Action into all USPTO systems. If you try to respond too soon, the response form will not work.

Also, remember that you may not respond by e-mail, but instead should respond online using the TEAS Response to Office Action form to address any refusals and satisfy any requirements.

Although you may always call the examining attorney to discuss your application, sometimes an Office Action will specifically suggest that you contact the examining attorney to resolve issues by an Examiners Amendment. In these instances, call or email the examining attorney as requested as this will help speed up the processing time for your application. And remember:

A response is due by the deadline provided in your Office Action. For most Office Actions, a response is due within six months.

So, give yourself plenty of time in advance to respond. If you submit a response after the deadline, the examining attorney will not consider it and your application will be abandoned, meaning it is no longer being considered for federal registration. And there's no refund of your application fee.

If your mark does go abandoned and the failure to timely respond to the Office Action was unintentional, you may be able to file a Petition to Revive for an additional fee.

The petition form is available through TEAS and must be filed promptly, generally within 60 days after the date the application abandoned.

If you are unable to revive your application, you must file a brand new application, pay a new filing fee, and start all over again. For more information about petitions, be sure to watch the Petitions news broadcast.

So, make sure you check your application status every three to four months and file your responses when they are due. And feel free to replay this broadcast and click on any of the links within the Response to Office Action form for more information. And keep an eye out for more of these broadcasts throughout the website.

I'm Mark Trademan, Trademark Information Network.

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