Most trademark applications receive at least one notice from the examiner. That does not mean the application failed. An office action is a normal stage, and a good response can lead to registration.
What is an office action?
A notice from the Patent Office examiner listing obstacles to registration or items to correct, with a deadline for response.
Common reasons
- Similarity to an earlier mark, registered or pending.
- The mark is considered descriptive or not distinctive. See what cannot be registered.
- Unclear wording of goods or wrong classification. See trademark classes.
- A request to disclaim an element, such as a descriptive word within a design mark.
How to respond
- Amendment: narrowing or clarifying the list of goods, or correcting the classification.
- Argument: a legal explanation why the mark is distinctive or not similar to the earlier mark, including earlier decisions.
- Evidence of use: proof the mark acquired distinctiveness through use.
- Consent: a letter of consent from the earlier mark’s owner when the businesses do not compete.
What if you do not respond?
An application not answered on time may be deemed abandoned. Extensions can be requested, but it is better to act on time.
And if the examiner refuses?
You can request a hearing before the Registrar and, where appropriate, appeal to court. Consider also refiling an improved mark. See registration stages.
Where do you go from here?
A good trademark is chosen, checked and registered correctly from the start. At Paz Israel & Co. Law Office we support businesses, startups and entrepreneurs with availability searches, class selection, filing, responding to the examiner and oppositions, as well as registration abroad and enforcement against infringers. For more information see our trademark registration page, or contact us to schedule a meeting in Tel Aviv, Jerusalem or Modi’in.
This article provides general information, is correct as of the time of writing, and does not constitute legal advice or a substitute for reviewing your specific circumstances.