After submitting your trademark application to the United States Patent and Trademark Office, you will wait with anticipation, hoping that it will be approved. However, you may receive a letter of refusal or an office action instead, indicating that there are legal problems with your application or trademark. This delay in building your brand may be frustrating and leave you wondering, “How long does it take to respond to a USPTO office action?”

Four Reasons Legal knows how frustrating this situation can be. With our help, we can empower you to navigate this process quickly and efficiently, keeping your brand moving forward.

USPTO Office Actions

If you receive an office action or refusal from the USPTO, it indicates that, upon a review of your application, there were legal grounds for which your trademark could not be outright approved. In these instances, the letter will indicate specifically what may be at issue, providing you with the opportunity to correct it and resubmit your application. Common reasons that might trigger this type of letter include:

• Trademark similarity. The Lanham Act governs trademarks. Within the law, there are specific requirements that prevent trademark approvals for those that are similar to already existing ones, specifically in the same market. If your trademark application fits this situation, it may be denied. However, if yours is in a different market, then it may be approved. This is how Delta can be trademarked as an airline, while Delta can also be a trademark of a faucet company.
• Descriptive trademark. Too much description in a trademark may sound confusing, as you want your trademark to be unique, and the addition of more description may provide that. However, trademark descriptions apply more to specificities, such as a geographic location or the name of a person other than the applicant themselves.
• Requests for disclaimers. Disclaimers help differentiate one entity from another one that may be similar. This is one of the more common types of refusals that trademarks may receive. Disclaimers may be simple additions to your trademark that help set them apart.

These are a few of the reasons why you may receive a refusal letter or office action. Others may include an incomplete application or the necessity to amend a part of your application. If it is the first office action, it will be considered non-final, which means that you have the opportunity to provide the requested changes. If it is a final letter and it is still not approved, you can appeal the decision of the reviewers and provide the necessary evidence.

Response Time for USPTO Office Actions

Processing the trademark application will generally take months, depending on the circumstances of the application and the number of pending applications. However, once it is processed and a determination is made, if you receive an office action letter, it will indicate the reason for the letter and what changes need to be made to your application.

In addition, the letter will post the response time that is required of you for your application to be reconsidered. The time is generally three months. However, you can request an extension of up to three additional months, but a fee may be required to do so. While you are welcome to apply for the extension, there is no guarantee that it will be provided.

When responding to an action letter, it is important that you include the response time period in your letter as a reference with your resubmission. Your response will be marked as received on the date of resubmission as long as it occurs prior to 11:59 PM. Failure to submit your response to the letter could result in the assumption that you are abandoning your application. If that happens, you must begin the application process again.

FAQs

Q: What Is Evidence of Trademark Use?

A: If you receive an office action, you will need to respond to it by addressing the concerns. This could include submitting evidence of your usage of the applied trademark. Evidence that you may wish to provide includes:

• Photographs of packaging, labels, or other usage within your organization
• Usage on websites and social media
• Other branding that includes your trademark

Providing dates with your evidence can show the history of your usage.

Q: How Much Is the USPTO Response to Office Action Fee?

A: The USPTO charges several fees that are associated with filing an application for a trademark. However, unless you are applying for an extension of the time period in which to respond, you may not be required to pay an additional amount. Your attorney can work with you to understand the initial fees and any others that may be incurred by responding to an office action.

Q: How Often Does a Trademark Need to Be Renewed?

A: Trademark registrations are not perpetual. Entities using a trademark must renew their registration every ten years. In the renewal process, you will submit evidence to show that the trademark has been in continual and exclusive use by your entity. While deadlines are generally firm, you will have a six-month grace period to ensure that your registration is filed properly. You will want to be sure to keep track of the timeline to renew your trademark, though you may receive a reminder from the USPTO.

Q: What Is the Difference Between a Final and a Non-Final Office Action?

A: A non-final office action from the USPTO is one in which you have an opportunity to respond. It will contain information on what must be resubmitted to help clarify your application or provide more information about your trademark. A final office action is a final determination letter. Should you disagree with this letter, you will need to work with your attorney to file an appeal for reconsideration.

Denver Trademark Attorney

Whether you have received an office action from the USPTO or want to start an application for a new trademark, your brand deserves the help of a skilled and knowledgeable trademark attorney. At Four Reasons Legal, our firm can assist you with building your brand and identity. We can help your consumers trust your brand because you can trust us to get the job done right. Contact us today.