FAQ

An office action is an official letter from the United States Patent and Trademark Office (USPTO) that identifies issues with your trademark application. These issues must be addressed before your trademark can proceed to registration.

There are two main types of office actions:

• Non-Final Office Actions: highlight initial issues with your application

• Final Office Actions: issued if the USPTO believes the issues were not adequately addressed in your response to the non-final action.

A Notice of Allowance (NOA) is issued by the USPTO when your trademark application has passed the examination phase and is allowed for registration, pending the filing of a Statement of Use (SOU) or an Amendment to Allege Use (AAU).

Responding to an office action involves reviewing the USPTO's concerns, preparing a detailed response that addresses each issue, and filing the response within the specified deadline. At Brand Diplomacy, we assist you with this entire process to ensure a thorough and effective response.

If you do not respond to an office action within the specified timeframe (typically six months), your trademark application will be abandoned. It is crucial to address the issues promptly to keep your application active.

Common reasons include likelihood of confusion with an existing trademark, descriptiveness, specimen issues, classification errors, and lack of distinctiveness.

Yes, you can request an extension if you are not ready to file a Statement of Use (SOU) within the initial six months. The USPTO allows up to five six-month extensions, giving you a total of 36 months to use your trademark in commerce.

A Statement of Use (SOU) is filed after receiving a Notice of Allowance (NOA) to show that your trademark is being used in commerce. An Amendment to Allege Use (AAU) is filed before the NOA if your trademark was already in use in commerce before the NOA was issued.

If your response to a non-final office action is not accepted, the USPTO will issue a final office action. You can respond to the final office action with additional arguments or evidence, or consider filing an appeal. Brand Diplomacy can guide you through this process to improve the chances of a successful outcome.

Our team of experienced trademark attorneys can assist with reviewing the office action, developing a strategic response, preparing necessary documents, managing extensions, and providing legal representation if needed. We ensure a comprehensive approach to address all USPTO concerns.