Back to Office actions

How can I overcome a non-substantive office action?

Written by Jan Buza

Co-founder of Trama

Most non-substantive office actions are straightforward to resolve. The office action identifies a specific (commonly administrative) error, and if the response corrects it, the application goes through to the next step in the process.

If incorrect owner details are cited as the issue, submit a correction with the accurate information. If it’s an insufficient specimen, submit a substitute that meets the requirements (these should be real, unaltered images showing the mark in use in commerce in connection with the goods or services). If an issue arises with the goods and services description, amend it to use terminology recognized by the IP office. For a missing payment, you should submit the outstanding fee.

The office action itself usually specifies exactly what is needed, so simply follow the instructions outlined in the letter to get the best chances of being accepted without further correspondence.

Related questions

Lindt secured another win for its chocolate bunny trademark in the EU

The Federal Supreme Court ruled that the gold-coloured foil-wrapped chocolate bunny from Lindt & Sprüngli can claim trademark protection against the competing product from Lidl. Lidl is no longer allowed to sell its rabbit because of the risk of confusion and must destroy existing copies of the product.

Trademark Registration: DIY vs Professional Service

Filing for trademark registration is something anybody can do with a single online application. Many business owners, however, decide to wait with trademark registration because the process can appear quite complicated at first sight. Applying without a legal representative can be a difficult and time-consuming process. Mistakes and errors are easy to make and can lead to weak trademark protection or the rejection of your trademark registration altogether.

Answering all your trademark concerns

Many entrepreneurs still consider trademark registration to be the least important step in the process of establishing their brand. This can become a big issue. Not registering a trademark from the start leaves a company vulnerable to potential copycats and other forms of brand infringement that can significantly damage its reputation and hamper growth.