Understanding USPTO Office Actions

Hello!

Welcome Back! Posting was kind of slow this past week because my MAC is in the shop getting a much deserved upgrade!

Understanding USPTO Office Actions can be a very daunting tasks for a non-attorney. Office Actions are drafted by USPTO attorneys and set forth the legal status of a trademark application. Thus the Office Action contains a lot of legalese, i.e., rules, laws, etc. that may need interpretation and sometimes further research and explanation. Understandably, an individual who filed their application without an attorney can be intimated and confused. There are several types of Office Actions. However, I will address the two types I encounter the most.

Office Action: An USPTO examining attorney informs the applicant of any conflicts with another trademark. Also an examining attorney may address issues such as whether the trademark is valid under US trademark law or the sufficiency of submitted specimens. An applicant has 6 months to respond to the Office Action and to correct or address each issue raised. If each issue is not addressed and appropriately remedied within the 6 month time frame, then the application will be abandoned.

Priority Action: An USPTO examiner will issue this action after consulting with the applicant or the applicant's attorney regarding specific requirements that have to be met before the application is approved for publication. If the requirement is not met, the application will be abandoned. However, if the applicant responds within 2 months, the application is given priority processing.

If you are a business or individual who receives one of the above actions, and have no idea how to respond, it is very important to obtain legal assistance. If an applicant does not address all of the issue and/or does not respond within 6 months, the applicantion can be abandoned. I obtain many clients who are near the abandonment stage or their application has been abandoned because they did not answer the Office Action correctly. Fortuantely, if an application is abandoned, the USPTO does allow the applicant to Petition the USPTO to revive the application. The cost is $100 and must be received within 2 months after the abandonment takes effect.

As always I welcome your thoughts. And please if you have a question, please ask.