Filing a trademark application may look straightforward. The online application asks for information about your mark, your business, and the goods or services connected to the mark. The harder part is making sure the application meets USPTO requirements before you submit it.
What most people don’t realize is that some problems aren’t obvious until a USPTO examining attorney reviews the application and issues an Office Action. An Office Action identifies a legal or technical problem that you must address before the application can move forward. When it comes to USPTO Office Actions, having a trademark attorney early on in the process can avoid costly mistakes.
What Is a USPTO Office Action?
An Office Action is an official notice from the United States Patent and Trademark Office outlining a problem with a trademark application. These problems aren’t always fatal to an application, as it is possible to resolve some issues by providing more information.
It’s important to remember that an Office Action doesn’t always mean the application will fail. However, you’ll need to understand exactly what the examining attorney requires and respond by the deadline. Waiting until you receive an Office Action to involve a trademark lawyer can mean paying someone to address a problem that could have been avoided from the start.
Reasons for a USPTO Office Action
The USPTO can issue an Office Action for many reasons. Some of them are deeper issues that will take time to resolve, while others are administrative issues that can usually be resolved quickly. Some of the most common examples include the following.
Likelihood of Confusion
The USPTO can refuse registration if your proposed mark creates a likelihood of confusion with an existing registered mark. The marks do not necessarily need to be identical. The USPTO considers similarities between the marks and the relationship between the associated goods or services.
Problems With the Specimen
If you file based on current use of a trademark, you generally need to submit a specimen showing how you actually use the mark in commerce. The type of acceptable specimen depends on whether you provide goods or services.
Generic Terms
A generic term identifies the product or service itself rather than its source. Generic terms cannot receive trademark registration for the goods or services they describe.
Failure to Function as a Trademark
Not every word, phrase, symbol, or design functions as a trademark. A trademark must tell consumers that particular goods or services come from a specific source. You’ll need to meet these basic requirements for your application to be accepted.
Problems With the Identification of Goods or Services
Your application must accurately identify the goods or services connected to your trademark. You also need to place those goods or services in the appropriate trademark classifications.
An identification that is unclear, overly broad, or otherwise unacceptable can result in an Office Action. Careful drafting before filing can reduce these problems and help make sure the application reflects what your business actually offers.
Work With an Attorney Early to Help Avoid a USPTO Office Action
Submitting a trademark application is only the beginning of the registration process. The decisions you make before filing can determine whether the application moves forward smoothly or encounters problems that require additional time and expense.
I help entrepreneurs, startups, inventors, and small businesses throughout the country evaluate trademarks before filing and prepare applications with USPTO requirements in mind. If you’re ready to begin your trademark application, it’s in your best interest to work with an attorney now before you hit a speed bump. Reach out anytime to learn more.