Trademark Office Action Response .pdf
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YOU RECEIVED AN OFFICE ACTION…NOW WHAT?
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Your Office Action response filed An expert trademark paralegal
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What is an Office Action?
A trademark application Office Action is an official letter from the United States Patent and Trademark
Office (USPTO) identifying problem(s) with your trademark application and rejecting the registration
of your mark. The USPTO invites you to respond to the Office Action, providing you a limited period
of time to explain the reasons why you should receive a registration for your trademark in light of the
reasons the Trademark Office Examining Attorney rejected your application.
Types of Office Actions
Administrative rejections can usually be overcome by providing additional information to the USPTO or
making focused revisions to your application in conformity with the trademark regulations and U.S. law.
Administrative rejections typically include
Unclear Identification of Goods/Services
Likelihood of Confusion/Descriptiveness:
A likelihood of confusion rejection is where the USPTO considers your applied-for trademark
confusingly similar to an earlier filed trademark application or registered trademark. Descriptiveness
issues arise when the applied-for mark describes (or misdescribes) an ingredient, quality, characteristic,
function, feature, purpose or use of the identified goods or services. These rejections typically require
attorney expertise to properly provide argument, cite case law and distinguish your applied-for trademark
from the marks cited by the USPTO.
WHY IS A TRADEMARK REGISTRATION SO IMPORTANT?
A trademark is more than just a calling card. It can be your company’s most valuable asset
due to its ability to be recognized by your customers as the mark of quality and high
reputation for your goods and services. Your trademark tells your customers that they are
dealing with you! Registering your trademark with the USPTO provides you important
rights to protect and defend yourself.
BENEFITS OF TRADEMARK REGISTRATION
PROTECT YOUR MARK
Trademark Registration grants you nationwide rights to protect against infringement and
gives you the ability to bring an action concerning your trademark in federal court
PRIORITY FOREIGN REGISTRATION
Use your U.S. trademark registration as a basis to obtain your trademark registrations in
U.S. CUSTOMS PROTECTION
U.S. trademark registration gives the U.S. Customs Service the ability to protect you from
imported knockoffs and counterfeits
PROTECT AGAINST CYBERSQUATTER INFRINGEMENT
Registering your trademark provides options to cancel or transfer an infringing domain name
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