How can I prevent the USPTO from raising an office action?

Photo of Tomas Orsula

Written by Tomas Orsula

Senior Trademark Attorney

Office actions are a natural part of the trademark registration process, and it may not always be possible to avoid receiving one. Still, by submitting a correct application with a strong mark, you can increase your chances of everything going smoothly.

Some of the things to keep in mind are:

Ensure your mark is distinct. Registration will be denied for marks that are generic or descriptive. While it's sometimes possible to overcome a refusal based on descriptiveness, starting with a strong and distinctive mark will help you avoid such issues. If you're uncertain about the distinctiveness of your mark, you can take advantage of our free lawyer's check to find out.

Pay close attention to correctly filing the information. Inaccurate or missing information could result in an office action. These administrative errors are typically easy to rectify, but they can needlessly prolong the trademark registration process. Common mistakes include errors in owner details, omission of domicile address, improper choice of legal entity, lack of necessary disclaimers, absence of translations or transliterations, and more. Occasionally, the problem may stem from incorrect formatting of the information, so it's important to adhere to the guidelines provided by the USPTO.

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

Submit proper specimen. Inadequate specimen is a common reason for refusal. To avoid receiving an office action, be certain that your specimen matches the applied-for mark, is legible, demonstrates a clear connection between the mark and the applied-for goods or 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. The USPTO will issue an office action if it finds a mark "confusingly similar" to yours. Therefore, it's crucial to have an overview of your competition and either amend your application beforehand or prepare a strategy to combat this type of office action once it's raised. A trademark search is also a part of our free lawyer's check.

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