1 00:00:00,000 --> 00:00:05,305 [music] 2 00:00:05,305 --> 00:00:10,310 MARK: Hello everyone. And welcome to another Trademark Information Network Special Report. In this segment, we'll 3 00:00:26,560 --> 00:00:33,567 discuss what you need to know about responding to the most common type of USPTO Office action: a non-final Office 4 00:00:33,567 --> 00:00:40,407 action issued by a USPTO examining attorney. For information on how to respond to other types of Office 5 00:00:40,407 --> 00:00:45,412 actions, review your Office action carefully and follow the response link to access the appropriate form. 6 00:00:48,315 --> 00:00:54,521 Before we take a closer look at the actual form for responding to a non-final Office action, let's go over a little 7 00:00:54,521 --> 00:00:59,526 background. We can use one of the Trademark Timelines found on the USPTO.gov website for reference. 8 00:01:01,495 --> 00:01:08,302 Approximately eight months after you submit your trademark application, a USPTO examining attorney will review the 9 00:01:08,302 --> 00:01:09,670 application. 10 00:01:09,670 --> 00:01:16,009 If the examining attorney determines that the mark cannot be registered or that certain requirements have not been met, 11 00:01:16,009 --> 00:01:21,014 the attorney will issue a letter, also known as an Office action. The Office action identifies any problems with 12 00:01:23,150 --> 00:01:28,722 the application and gives you an opportunity to address or correct them. 13 00:01:28,722 --> 00:01:34,728 As you can see from the timeline, you usually have three months from the issue date to respond to the letter. 14 00:01:34,728 --> 00:01:41,535 Sometimes the deadline is shorter, though, so be sure to double-check your Office action. If you do not submit a 15 00:01:41,535 --> 00:01:46,540 timely response, your application will go abandoned, meaning that the application process has ended and your mark 16 00:01:49,142 --> 00:01:50,944 will not register. 17 00:01:50,944 --> 00:01:56,516 For more information about Office actions, visit the USPTO's webpage that explains the different types of 18 00:01:56,516 --> 00:02:00,821 communication you may receive and how to respond to them. 19 00:02:00,821 --> 00:02:07,494 If the examining attorney sends you an Office action, you will receive an email notifying you that one has been sent. Note 20 00:02:07,494 --> 00:02:12,499 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 21 00:02:14,735 --> 00:02:20,707 important notice for junk mail or spam. To see the letter, simply click on the provided link. 22 00:02:20,707 --> 00:02:25,712 Or, in the alternative, you can access the letter directly from the USPTO website by entering your serial number in the 23 00:02:28,115 --> 00:02:33,120 Trademark Status and Document Retrieval system, known as TSDR. The system contains electronic copies of everything 24 00:02:35,355 --> 00:02:39,493 in your file, including your most recent Office action. 25 00:02:39,493 --> 00:02:44,498 To respond, use the Trademark Electronic Application System, or TEAS, T-E-A-S. 26 00:02:46,833 --> 00:02:53,206 \TEAS has a specific electronic form that you use to respond to the Office action. It's available through the link in 27 00:02:53,206 --> 00:02:57,878 the Office action, as well as the USPTO.gov website. 28 00:02:57,878 --> 00:03:02,816 Before responding, however, remember that it is very important that you read the entire Office action. I know it 29 00:03:05,052 --> 00:03:10,557 can seem overwhelming, but the Office action tells you the legal problems with your application and provides you 30 00:03:10,557 --> 00:03:17,130 with the legal reasoning supporting any refusals and requirements. It's also very important that you understand 31 00:03:17,130 --> 00:03:22,135 all of the issues, as your response must cover each and every point raised in the Office action. 32 00:03:24,438 --> 00:03:30,544 When possible, though, the Office action will give you examples and suggestions of ways to overcome certain 33 00:03:30,544 --> 00:03:35,949 refusals and fulfill outstanding requirements, so be sure to keep an eye out for them. 34 00:03:35,949 --> 00:03:40,954 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 35 00:03:44,357 --> 00:03:45,892 Action form. 36 00:03:45,892 --> 00:03:52,232 The form has a detailed set of instructions, so be sure to follow them. Looking at the form itself, it's a two-step 37 00:03:52,232 --> 00:03:57,237 process. Step one is answering the form wizard questions. And step two is providing the arguments and required 38 00:04:00,440 --> 00:04:04,411 information triggered by your answers to those questions. 39 00:04:04,411 --> 00:04:10,617 Make sure to address all of the issues listed in your Office action. If you skip one, the examining attorney will be 40 00:04:10,617 --> 00:04:14,955 forced to send a Final Office action. 41 00:04:14,955 --> 00:04:19,960 Remember, you must respond to each and every point that the Office action raises. Even if you agree with everything the 42 00:04:22,262 --> 00:04:27,267 examining attorney has required, you must explicitly state any appropriate arguments and manually enter any changes 43 00:04:29,569 --> 00:04:34,574 you want made; you should not simply submit a response that consists only of your signature. 44 00:04:36,776 --> 00:04:43,517 And, as we conclude this report, keep in mind the following items: Every three months, check the status of 45 00:04:43,517 --> 00:04:50,290 your application to ensure that you haven't missed or overlooked any deadlines or communications from the USPTO. 46 00:04:50,290 --> 00:04:55,295 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 47 00:04:57,531 --> 00:05:01,835 system and you can easily view or download the communication. 48 00:05:01,835 --> 00:05:06,840 Be sure to wait 48 to 72 hours after receiving your email notice that an Office action has issued before attempting to 49 00:05:09,109 --> 00:05:14,114 respond. This allows the USPTO time to upload the document into the necessary systems. If you try to respond too soon, 50 00:05:17,584 --> 00:05:20,320 the response form will not work. 51 00:05:20,320 --> 00:05:25,325 Also, remember that you may not formally respond by email, but instead only should respond online using the TEAS Response 52 00:05:29,596 --> 00:05:35,235 to Office Action form to address any refusals and satisfy any requirements. 53 00:05:35,235 --> 00:05:42,142 In some cases, an Office action will specifically suggest that you contact the examining attorney to resolve issues by 54 00:05:42,142 --> 00:05:47,147 an Examinerís Amendment. In these instances, immediately call or email the examining attorney, as requested. This 55 00:05:50,217 --> 00:05:54,554 will help speed up the processing time for your application. 56 00:05:54,554 --> 00:05:59,559 And remember: a response is due by the deadline provided in your Office action. For most Office actions, a response is 57 00:06:02,162 --> 00:06:03,630 due within three months. 58 00:06:03,630 --> 00:06:08,635 If you submit a response after the deadline, the examining attorney will not consider it and your application will be 59 00:06:10,971 --> 00:06:15,976 abandoned, meaning it is no longer being considered for federal registration. And there's no refund of your 60 00:06:18,812 --> 00:06:20,480 application fee. 61 00:06:20,480 --> 00:06:26,319 If your mark does go abandoned and the failure to timely respond to the Office action was unintentional, you may be 62 00:06:26,319 --> 00:06:31,324 able to file a Petition to Revive for an additional fee. For more information about petitions, be sure to read all 63 00:06:33,393 --> 00:06:39,699 the information provided on USPTO.gov, as well as watch the Petitions news broadcast. 64 00:06:39,699 --> 00:06:46,539 If all this sounds daunting, you may wish to consider hiring a trademark attorney to assist you. The Office cannot aid you 65 00:06:46,539 --> 00:06:51,544 in the selection of an attorney, but information about using private legal services is available on USPTO.gov. You can 66 00:06:55,415 --> 00:07:00,353 also watch "How Do I Get Help With My Application" in the Basic Facts video series, available on USPTO.gov. 67 00:07:04,958 --> 00:07:09,963 It's possible you may receive direct solicitations from private attorneys offering to prepare your response for you. 68 00:07:12,232 --> 00:07:17,103 These attorneys know you received an Office action because they can view your contact and application 69 00:07:17,103 --> 00:07:22,108 information at the USPTO website; such information is public once you file an application. The USPTO has no 70 00:07:25,178 --> 00:07:30,750 role in these solicitations and the decision to hire an attorney is up to you. 71 00:07:30,750 --> 00:07:35,755 And remember: if you are a foreign-domiciled applicant, you must hire a U.S. licensed attorney to represent you. 72 00:07:38,792 --> 00:07:45,532 In addition to these solicitations, you may receive other notices and offers, some of which are potentially 73 00:07:45,532 --> 00:07:51,771 misleading. For more information about these communications, including access to examples of them, be 74 00:07:51,771 --> 00:07:56,776 sure to check out the provided USPTO webpage. You can also watch the Trademark Information Network "Solicitation Alert" 75 00:07:59,412 --> 00:08:02,215 broadcast, available on USPTO.gov. 76 00:08:15,195 --> 00:08:20,633 Feel free to replay this broadcast at any time and click on any of the links within the Response to Office Action form 77 00:08:20,633 --> 00:08:25,638 for more information. And keep an eye out for more of these broadcasts throughout the website. 78 00:08:25,638 --> 00:08:28,641 I'm Mark Trademan, Trademark Information Network. 79 00:08:28,641 --> 00:08:30,643 Page 4