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 six 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 about office actions, visit the USPTO's webpage that explains the different types of communication you may receive and how to respond to them.

If the examining attorney sends you an office action, you will receive an email notifying you that one has been sent. Note that the email will be from an ECom@uspto.gov address. Keep an eye out for the email 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.

To respond, use the Trademark Electronic Application System, or TEAS, T-E-A-S.  TEAS has a specific electronic form that you use to respond to the office action. It's available through the link in the office action, as well as the USPTO.gov website.

Before responding, however, remember that it is very important that you read the entire office action. I know it can seem overwhelming, but the office action tells you the legal problems with your application and provides you with the legal reasoning supporting any refusals and requirements. It's also very important that you understand all of the issues, as your response must cover each and every point raised in the office action.

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.

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.

The form has a detailed set of instructions, so be sure to follow them. Looking at the form itself, it's a two-step process. Step one is answering the form wizard questions. And step two is providing the arguments and required information triggered by your answers to those questions. 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.

Remember, 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.

And, as we conclude this report, keep in mind the following items: Every 3 to 4 months, check the status of your application to ensure that you haven't missed or overlooked any deadlines or communications from the USPTO.

Use the online TSDR system to see if there was any recent activity in your case. If there was, 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 email notice that an office action has issued before attempting to respond. This allows the USPTO time to upload the document into the necessary systems. If you try to respond too soon, the response form will not work.

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

In some cases, an office action will specifically suggest that you contact the examining attorney to resolve issues by an Examiner’s Amendment. In these instances, immediately call or email the examining attorney, as requested. 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.

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. For more information about petitions, be sure to read all the information provided on USPTO.gov, as well as watch the Petitions news broadcast.

If all this sounds daunting, you may wish to consider hiring a trademark attorney to assist you. The office cannot aid you in the selection of an attorney, but information about using private legal services is available on USPTO.gov. You can also watch video number four in the Basic Facts video series, titled "How Do I Get Help With My Application," available on USPTO.gov.

It's possible 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. And remember: if you are a foreign-based applicant, you must hire a U.S. licensed attorney to represent you.

In addition to these solicitations, you may receive other notices and offers, some of which are potentially misleading. For more information about these communications, including access to examples of them, be sure to check out the provided USPTO webpage. You can also watch the Trademark Information Network "Solicitation Alert" broadcast, available on USPTO.gov.

So, make sure you check your application status every three to four months and file your responses when they are due. Otherwise, you could end up with an abandoned application.

Feel free to replay this broadcast at any time 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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