Important Note: The analysis and resolution of trademark issues depends to a great extent on the facts and circumstances of the situation at hand. You should not rely on this information to make decisions critical to your business, as it may be incomplete or incorrect when applied to your particular circumstances. This general information does not constitute legal advice, and is not intended to replace the counsel of a trademark attorney.
What is a Non-Final Office Action?
After a trademark application is filed with the USPTO, it is assigned to an examining attorney (or trademark examiner or examiner) for review. While some applications may be approved on initial review, more often the examiner issues an office action, a letter refusing registration of the applied-for mark and setting out the bases for the refusal.
The first office action is a non-final office action. The applicant must file a response within six months after the date of the office action, addressing each issue raised in the office action by, as applicable:
- Correcting any technical defects.
- Providing arguments to refute any substantive refusals.
- Modifying the application to address substantive refusals.
After the applicant files a timely response to a non-final office action, the trademark examiner then issues either:
- A notice of publication or notice of allowance.
- Another (typically final) office action, if the examining attorney does not believe all of the issues have been addressed.
A trademark examiner may also issue an office action in response to a statement of use or a post-registration filing.
Legal Bases For Refusal to Register
Defects in the formal application requirements. For example, the examining attorney may object that:
- the application's goods or services identification is indefinite, too broad, or otherwise unacceptable;
- the specimen does not match the drawing of the mark; or
- there is no description of a design mark or the description is inaccurate or incomplete.
Descriptiveness or one of the other grounds for refusal under 15 U.S.C. § 1052(e), such as:
- geographic descriptiveness; or
- that the applied-for mark is primarily merely a surname.
A likelihood of confusion with a previously registered or applied-for mark.
Deadline to Respond to Office Actions
The applicant must file a response within six months after the date of the office action. If the applicant does not submit a complete response to the office action by the due date, the USPTO deems the application abandoned. Therefore, on receiving an office action, the applicant and counsel should immediately:
- Docket the deadline and multiple interim reminders.
- Discuss an office action response strategy, as it may sometimes take several months to obtain affidavits, consents, and other necessary evidence.
An applicant can seek revival of an abandoned application by, within two months of the notice of abandonment, filing a petition to revive, which must include:
- A filing fee.
- A showing that the delay in responding to the office action was unintentional.
- The proposed response.
Suspension of Applications
If the application is otherwise in condition for approval but circumstances prevent the examining attorney from finalizing its review, the examining attorney may issue a suspension notice suspending action on the application until the outstanding issue is resolved.
For example, the examiner typically suspends an otherwise publishable application if the examiner finds a likelihood of confusion between the applied-for mark and a mark in an earlier-filed third-party application that is still pending. If the third-party application matures into a registration, the examiner may then issue a likelihood of confusion refusal.
The examiner also may suspend an application when, for example:
- The applicant has filed a petition to cancel a registration cited against the application.
- A proceeding is pending before a court or the TTAB that is relevant to the registrability of the applied-for mark.
- Under the Paris Convention or other international agreement, the applicant has based its application on a foreign application, which has not yet matured into registration.
- The TTAB's Assignment Recordation Branch has not yet recorded an assignment of the application that the applicant filed.
While an applicant is not required to respond to a suspension, it may do so. A response typically includes:
- Arguments and evidence addressing the substantive basis of the suspension.
- A request for the examining attorney to lift the suspension.
A response to a suspension may be submitted using the USPTO Response Form 3: Response to Suspension Inquiry or Letter of Suspension.
During longer suspensions, the examining attorney issues an office action every six months to get a status update from the applicant about the matter underlying the suspension. If the applicant does not submit a timely response to the suspension inquiry, the application will be abandoned.
Options When Facing a Final Refusal
If the applicant is unsuccessful in overcoming the initial refusal and receives a final refusal, the application is deemed abandoned unless the applicant files an appropriate response with the USPTO within six months from the issuance of the final refusal. The two principal responses are:
- A request for reconsideration of the final refusal by the examining attorney.
- A notice of appeal of the examining attorney's final refusal to the TTAB, along with the requisite fee.
If the refusal was based on a likelihood of confusion, the applicant also may consider whether it has a basis to file a petition with the TTAB to cancel any conflicting registration.
While it may be possible to overcome a refusal by using persuasive arguments and evidence, it is best to avoid receiving an office action in the first place. Strategies for avoiding refusals include:
- Proper trademark searching and clearance. An applicant may modify its mark or choose a different mark where a search identifies potential conflicts or reveals that others in the same industry use the mark descriptively. For more information on trademark searching and clearance, see Practice Note, Trademark Searching and Clearance.
Tailoring trademark applications to avoid refusals. In some cases, an applicant may be able to:
- help distinguish its mark from a potentially conflicting registered mark, by "drafting around" the registered mark with limitations in the goods and services identification or by filing its mark in a stylized form or with a design element;
- limit refusals based on descriptiveness, by modifying its mark or narrowing the goods and services identification; or
- avoid a refusal because the examiner deems the identification vague or too general, by drafting the goods and services identification based on wording in the USPTO's online Acceptable Identification of Goods and Services Manual.
Delaying filing of the application. A prospective applicant that uses its mark for a sufficient time period without consumer confusion or objection from the owner of the potentially conflicting mark may be in a better position to overcome a likelihood of confusion refusal by arguing that the long-term marketplace coexistence without actual consumer confusion shows that confusion is unlikely. Likewise, prolonged use may strengthen an applicant's position that its descriptive mark has acquired distinctiveness.
Filing a petition to cancel any conflicting registrations and requesting that the USPTO suspend action on the applicant's application pending the cancellation's outcome.