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Do I need to respond to an Office Action from the United States Patent and Trademark Office?

By: Trademark Attorney Melissa D. Goolsarran Ramnauth | Fort Lauderdale

You should always respond to an Office Action from the USPTO.

If you do not respond to an Office Action from the USPTO, your trademark application might be refused. Someone else might swoop in and trademark the mark (name or design) that you originally wanted.

What is an Office Action?

An Office Action is an official correspondence from the USPTO concerning your trademark application.

Kinds of Office Actions

The Office Action might be a minor administrative Office Action. These kinds of Office Actions could be easy to respond to. You might have to correct an address or submit a better specimen of proof.

However, the Office Action could also be complicated. Arguably, the most complicated Office Action is a 2(D) refusal for likelihood of confusion with another mark. This means that your mark is too similar to a registered mark and the USPTO wants to deny registration.

A proper trademark clearance search should have revealed the potential for receiving an Office Action based on the similar mark. An applicant who receives this refusal should respond appropriately by “explaining how [their] trademark (...) [and] goods and services differ from the registered trademarks” and make necessary changes if required.

It might be discouraging to receive a complicated Office Action but that is not the end of the road. An experienced trademark attorney might find ways to overcome an Office Action refusal based on a 2(D) likelihood of confusion claim.

Moreover, a timely and complete response to an Office Action can result in your trademark application proceeding faster.

How can you respond to an Office Action?

There are two ways to respond to an Office Action. First, an applicant might be able to respond to an Office Action via phone call. These virtual meetings are kept private. If one prefers, he or she can also communicate with the USPTO via email. Written communications with the USPTO are publicly available.

You can also respond to the office action via the USPTO's Trademark Electronic Application System. Per the USPTO's website, a non-final office action requires the use of the TEAS Response to Office Action Form, whereas a final office action requires a TEAS Request for Reconsideration after Final Action Form. The latter form allows one to appeal a final office action and ask that the USPTO reconsiders its decisions regarding the application.

The Importance of a Proper Office Action Response

Failure to respond swiftly, or at all, may result in the complete rejection of an application, the inability to use a trademark, or a lengthy filing process. This would also increase any legal fees if the applicant is being represented by an attorney.

If you are applying for a trademark and require further assistance, please feel free to contact MDGR Law. We are happy to help.

Melissa D. Goolsarran Ramnauth, Esq.


Trademark & Business Law Firm

(754) 800-4481


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