Can I prevent an office action from happening?

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Written by Jan Buza

Co-founder of Trama

Office actions are raised if the examining attorney discovers issues with your trademark application. While you can't prevent an office action entirely, there are steps you can take to lower the risk - meaning submitting an overall stronger application.

Ensure your mark is distinct. Generic or descriptive marks will be denied registration. While it's sometimes possible to overcome a descriptiveness refusal, having a strong and distinct mark from the get-go will help you avoid refusal. If you want to know if your mark is sufficiently distinctive, we offer this analysis as a part of our free lawyer's check.

Pay close attention to correctly filing the information. Missing or incorrect information may lead to an office action. While these administrative errors are quick to correct, they will unnecessarily delay the registration process of your trademark. These mistakes include errors in intended owner details, missing domicile address, incorrect choice of legal entity, missing disclaimers, missing translations/transliterations and more. Sometimes, the error can be in the incorrect formatting of the information, so be sure to follow the given IP office's guidelines.

Ensure a clear and descriptive description of your goods and services. The IP office can issue an office action if your goods and services terms are vague or potentially misleading. Consulting with a trademark attorney is often advisable to ensure that your description meets the requirements.

Submit proper specimen (US only). One of the most frequent types of refusal in the USA relates to the submission of improper specimen. To avoid an office action, be sure to provide a specimen that matches the mark as applied for, is legible, shows a sufficient link between the mark and goods/services, is a proper type of specimen for your given class, and is not a digitally altered image/mockup.

Run a trademark search to uncover similar marks (US required; otherwise suggested). The USPTO will issue an office action if it finds a mark "confusingly similar" to yours. In other jurisdictions, you may not receive an office action, but the owners of previously registered trademarks can oppose your application later in the registration process, so it's still advisable to know about their existence beforehand. You may, for example, choose to amend your mark or the list of goods and services to lower the perceived similarity between the two brands. While sometimes you won't be able to prevent this type of office action/opposition from happening, you can prepare a strategy for challenging it once it's raised. A trademark search is also a part of our free lawyer's check.

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