It is very common to receive an Office Action or an email for an Examiner’s Amendment from the USPTO.
An Examiner’s Amendment means that there is a way to fix the outstanding issues on your application without you having to file a formal response.
Maybe this means you have to clarify the exact meaning of what you’re selling or even just the name and legal entity of your company.
If you respond by agreeing to the Examiner’s Amendment, either by phone call or email, the good news is your application should proceed straight towards publication!
Note that if you do not respond promptly to an Examiner’s Amendment, the USPTO will issue an Office Action with the same issues. That means you’ll have to respond through the USPTO online system as opposed to just responding to an email.
An Office Action means that your application has outstanding issues. It could simply mean that you have to respond to a requirement, such as a disclaimer, or it could mean something more substantive, such as a refusal.
Refusals might include a Section 2(d) Refusal – which means the USPTO is arguing that there is another registered trademark that is similar enough to yours that it will create confusion for consumers.
Or it could include a Section 2(e)(4) Refusal, which means the USPTO is arguing that the trademark is primarily a surname, like Kullberg’s.
The Office Action should provide reasons for why a refusal or requirement is needed. Some issues will be easy for you to resolve. However, others – like refusals based on a Section 2(d) Likelihood of Confusion – will require you to make arguments in support of your registration.
Here are three tips when you receive an Office Action:
- Read the Office Action very carefully. It can be intimidating at first, but it should provide detailed reasons as to why there is a requirement or refusal.
- Remember there is a deadline to responding! You only have 6 months to respond or else you risk abandoning your application.
- Consider hiring an attorney who practices trademark law. At this stage, people often will reach out to attorneys for assistance with drafting a Response to the Office Action, particularly with the more complex substantive refusals. The hope is that the USPTO will review your arguments, and then withdraw its refusal.
Remember this is a highly specialized field and you want to ensure that your attorney knows the ins and outs of the registration process.
