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USPTO Examination of Trademark Applications

After you have filed your trademark application it will be reviewed by a USPTO examiner to determine the strength and availability of the mark. Usually, this will occur approximately 3-4 months after filing the application. If the examiner does not find any concerns with your application then the next step will be to publish the application for opposition. Otherwise the Examiner will issue an official letter, such as an office action, an examiner’s amendment, priority action, or suspension letter.

OFFICE ACTIONS

Office actions detail the Examiner’s concerns with registering the applied for trademark, outline a means for overcoming the concerns, if possible, and provide a deadline for you to respond.

There are two types of office actions: final, and non-final, though both types of office action should be viewed as a substantive rejection of your application and must be responded to by the deadline or the application will be abandoned.

Non-final office actions are rejections that raise the Examiner’s concerns for the first time while final office actions only issue after the Examiner determines that the concerns of the non-final office action were not sufficiently addressed.

Both final and non-final office actions can be overcome by addressing the Examiner’s requirements, by persuading the examiner to withdraw the rejection (for non-final office actions), or by appealing to the Trademark Trial and Appeal Board (for final office actions).

For example, if the Examiner determined that your trademark application created a likelihood of confusion with another trademark she would issue a non-final office action rejecting your application. If you were to respond with evidence and arguments that overcame the Examiner’s concerns, she might issue an allowance, otherwise, she would reaffirm her rejection through a final office action.

Although you might deliver a request for reconsideration, your likeliest chance to register your trademark after receiving the final office action would be to appeal to the TTAB.

AMENDMENTS, ACTIONS, AND SUSPENSION LETTERS

Examiner’s amendments. When the Examiner’s concern is largely procedural and easily corrected, you will receive an examiner’s amendment. Examiner’s amendments are written notices that the Examiner has taken the liberty of slightly modifying your application and do not require a response unless you disagree with the change that was made.

For example, if you were to file an application for the trademark registration “Joe’s Tacos” the examiner might issue an amendment to disclaim “the exclusive right to use the word ‘Tacos’ apart from the mark as shown”. Priority actions. Priority actions also issue when the Examiner’s concern is largely procedural but, unlike, the Examiner’s amendment, you must respond with compliance to the Examiner’s requirements before the deadline or your application for trademark registration will abandon.

For example, if you submitted a specimen for proof of commercial use of your trademark registration that was not acceptable to the Examiner she might issue a priority action that requires you to submit a new specimen. Suspension letters. Suspension letters occur when examination of your application needs to be put on hold. This can be for several reasons and, depending on the reason, you may or may not need to respond to the suspension letter.

For example, if you were to erroneously submit the same application twice the Examiner would issue a suspension letter to pause examination until you responded with an abandonment of one of the applications for trademark registration.

RESPONDING TO OFFICIAL LETTERS

The standard response time for most official letters is 6 months from the date of the letter and if you do not respond by this deadline the USPTO will issue a Notice of Abandonment. However, each type of letter comes with some points to remember:

  • Non-final office actions (6 months to respond) – you must either comply with the Examiner’s substantive requirements or submit evidence and arguments to persuade her to issue an allowance;
  • Final office actions (6 months to respond) – you must either comply with the Examiner’s substantive requirements, file a request for reconsideration, or appeal to the TTAB;
  • Examiner’s amendments – no response required unless you disagree with the procedural amendment;
  • Priority actions (6 months to respond) – you must comply with the Examiner’s procedural requirements. If you respond within 2 months, you can maintain your priority in the Examiner’s docket (meaning that you do not have to go to the back of the line);
  • Suspension letters (6 months to respond) – check your letter to determine if a response is required.
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