By | Rebecca Siggers | Content Blogger
If you are trying to apply for a trademark or a patent for your new business or invention, we tell you about the three most important things that you should know about trademark office actions. However, before that, let us understand the meaning of office actions.
What Are Office Actions?
‘Office actions’ are the official letters that USPTO sends to the trademark applicants. If you are not aware of USPTO, it expands as the “United States Patent and Trademark Office.” As the name suggests, it is a place where you can apply for trademarks or patents for your work.
In earlier days, the USPTO used to send ‘office actions’ on a paper letter. However, as technology evolved, most of the office actions are now sent via emails these days. The USPTO now resolves some minor office actions over the phone, as well.
The Process Of Obtaining A Trademark Or Patent
Once you submit your application for a trademark or a patent at USPTO, the office assigns you a dedicated examining attorney who will carefully study your application. After that, if there is any legal problem with your request, the examining attorney will highlight those and ask you to resolve it within a stipulated time. The resolution that you give to the office action is called a “response.”
If the applicant’s response solves the defined legal problems and does not lead to any new legal challenge, then the USPTO will send the application to a final office action. In most cases, it is the applicant’s last opportunity to file a response during the entire application process. If the applicant succeeds in clearing all the legal problems, the office will accept the application and grant a trademark or the patent.
Now that you know how to obtain a trademark, let us understand the three things you should know about the trademark office action because office actions play an essential role in getting the trademark.
1. Deadlines Of An Office Action
Like every efficient process, even the office actions come with deadlines. In this case, the office gives deadlines to ensure that the applicant is actively working on fixing the legal problems listed in the office action. Typically, the deadline for an office action is six months, which is a reasonable time for most applicants to accommodate the required changes and revert to the USPTO. If the office does not receive a response to the office action, the office will abandon the application. It means that the application is no longer pending and cannot proceed to register a trademark or the patent.
It is advisable not to wait until the end of the deadline to respond to the office action and start working on it as soon as you receive the office action. It is because the office will not accept your response if you submit it after the deadline. Also, neither your application fees will be refunded, nor the trademark will be granted, in case of a delay. So, always make sure to submit your response within the deadline.
2. Reviving Abandoned Applications
As discussed, the USPTO will abandon the application for the trademark if it fails to respond to the office action within six months. Here, the applicant can no longer proceed to get the registration, and the applicant will lose his application fees as well.
In such a case, there is a separate process if you want to revive your application. Please note that you can restore your abandoned application only if the delay in response was unintentional. You will also have to produce suitable evidence to prove the unforeseen delay in responding if you want to restore our application.
To do that, you should electronically file a petition using the Trademark Electronic Application System (TEAS). The appeal will have a fee of US$100, which is non-refundable. Also, you should file the petition within two months of issuing date of the abandonment notice. The appeal must be accompanied by the response to the office action given earlier. In rare cases wherein the USPTO has abandoned the application due to an error at their end, the petition fees of $100 will be refunded. The application will enter the process of reviving and will be processed further at no extra cost.
3. Non-Final And Final Office Actions
There are two different types of office actions – final and non-final. When you apply for a trademark or a patent, the examining attorney will first give you non-final office actions. Non-final office actions allow you to work around the legal problems listed in it and come back with a response. Your response might lead to any new legal issues, which must also be resolved. Finally, when you submit a reply leading to no new further legal problems, you will be served with final office actions.
The final office actions are the last opportunity that you have to address any issues. If you fail here, your application will be rejected. However, if your application is found to have no further problems, it will register the trademark’s registration or the patent.
This article describes three things that you need to know about trademark office actions. The deadlines of six months to submit a response to the office action is imperative. If in case you fail to meet the deadline, you can revive the application by filing a petition. Once you can address all the legal challenges in the office actions, you can get your trademark of the patent registered with the United States Patent and Trademark Office (USPTO).