You Received an Office Action. Now What?

What to do if you receive an office action (objections from the trademark examiner)?

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TRANSCRIPT

So you filed your trademark application, you got a rejection letter from trademarks examiner. Now what?

And really, there are 3 possible options here.

Option number one: you could surrender and do nothing. You will have received several months—it’s usually 6-months both in Canada and the U.S.—to respond to the objections from the Trademarks Office. If you don’t respond within that timeline, then you trademark will be deemed abandoned. And that’s it. Really, it’s where the journey stops. And a lot of self-represented applicants, that’s really what happens with their trademark applications. They do everything themselves, they file the trademark application, then they get a letter from a trademark examiner and they have no idea how to respond to that. And they just let it go.

The second option is if the letter of the trademark examiner—it’s usually called an office action—if it gives you an idea how you can fix your trademark application to satisfy whatever requirements they have. So the second option is for you to follow their advice. It is not really advice, but if they tell you what is missing from your trademark application—and sometimes they even offer a possible solution to that—if you are ok with that, that’s another way to go. So you fix your trademark application—and they approve it.

And the third option is for you to come back to them with an argument as to why they are wrong and you are right. This can be done in many ways. One is you can simply argue with them. If you have an objection that you think does not make sense, you think it is not based on law, you just write back to them and argue saying and explaining why you think your trademark is registrable.

A second option is—let’s say, for example,— in the case of them raising an objection based on another previously registered trademark. What you could do in many cases is to obtain consent from that other trademark owner and if they are ok with that—and obviously they are not obliged to give you that consent—but if you managed to get their consent, you can go back with that consent to the trademark examiner and say, “Look, these guys who you say our trademark is confusingly similar with, they don’t mind that we have this trademark, so please approve it.”

Another variant of this third option would be for you to get that other previously filed or registered trademark canceled based on non-use or some other reasons. So if you can successfully kick out that other trademark application or registration that is in your way, if it is no longer registered, then again, you can go back to the Trademarks Office and say, “Look, you said our trademark application is confusingly similar with that other application or registration. Now that trademark registration or application is no longer active. So there is nothing that should be stopping you from approving our mark.”

So all of those things is really what trademark agents and trademark attorneys do after the trademark gets filed.

Filing a trademark application is easy. It is deceptively easy because when you file it, you just wait for several months until the trademark examiner gets back to you. And in 65 -70% of the cases, depending on the year, you will initially get an objection letter called an office action that lists the things that they don’t like about your application.

So the real work of trademarking firms starts when they either fix the trademark application or they fight with over the existing trademark application with a Trademark Office.


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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

See our answers to other frequently asked questions about trademarks or leave your comments below!


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