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Understanding Non-Substantive Office Actions: A Guide for Trademark Applicants

Posted by Dragan Dan Ivetić | Jul 25, 2023 | 0 Comments

USPTO Rejection.
An Office Action is a type of rejection

 Do you know what an Office Action is?

The process can be daunting and confusing for first-time trademark applicants, especially when unfamiliar terminology is utilized. Very often, when considering which attorney to hire, a small business owner is confronted with a variety of fee packages from lawyers to choose from, and they must do so without knowing what "non-substantive office actions" are, and if they should pick a service that includes that in the flat fee. All too often, they will not ask for clarification to avoid looking foolish. The purpose of this blog entry is to introduce non-lawyers to non-substantive Office Actions at the USPTO trademark office. Understanding the trademark registration process is crucial if you're a business owner or an aspiring entrepreneur looking to protect your brand. As you navigate the intricate world of trademarks, you may come across the term non-substantive Office Action. But fret not, because in this blog post, we will demystify this concept and provide you with a comprehensive understanding of what it means and how it may impact your trademark application. So, grab a cup of coffee, sit back, and let's dive into the world of non-substantive Office Actions at the USPTO trademark office!

1. Definition of Non-Substantive Office Actions

First, office actions are preliminary refusals issued by the examiner at the USPTO assigned to your application. These come in two variants, "substantive" and "non-substantive." They are issued roughly 60% of the time, so it is a good idea to plan ahead and retain an attorney at the time of the application to be ready to respond to them. Non-substantive office actions in trademark applications refer to letters from the USPTO as to minor issues or administrative matters that need to be resolved before the application can proceed. They are rightly titled as preliminary refusals as if you don't respond to them, your application is abandoned. You only get 3 months from the date of the letter to address and respond to the office action. This is a very strict deadline, such that missing by one day will mean your application is abandoned. Only one extension of 3 months is possible, but you have to ask for it, and pay a fee. It is thus important to address these issues promptly and accurately to ensure a smooth and efficient trademark registration process. By promptly resolving non-substantive office actions, you can prevent unnecessary delays and improve the chances of your application being approved. Working with an experienced trademark attorney can provide valuable guidance and assistance throughout the application process, helping you navigate any potential obstacles with ease.

2. Common Types of Non-Substantive Office Actions

Trademark applications can sometimes be met with explanatory office actions, which are common types of non-substantive office actions. These actions are initiated by the examiner to seek clarification or obtain additional information related to certain aspects of the trademark application. Explanatory office actions aim to ensure that the application is complete and accurate, and they provide an opportunity for applicants to address any concerns raised by the examiner. It is important for trademark applicants to respond promptly and thoroughly to these office actions, as they play a crucial role in the overall application process. By providing the requested information and clarifications, applicants can help move their trademark application forward and increase their chances of successfully obtaining a trademark.

Furthermore, formality requirements are usually quite easy to address. It may involve correcting minor errors in the application or providing missing information or documentation. When responding to a non-substantive office action, taking the time to consult the USPTO's manual may help applicants understand what needs to be done and what documents need to be submitted in order for their trademark application to move forward.

3. How to Respond to a Non-Substantive Office Action

The best strategy - don't wait! You only get 3 months, and that time starts running, fast! You don't have time to shop around to find a lawyer at that stage. Also, while the office action is pending, your application is stalled and going nowhere. To avoid being frantic, it is best already to have a lawyer on hand before the office action, monitoring your application and ready to assist. The good news is that many trademark attorneys (such as our office) will offer fixed or flat fee bundles for trademark applications that will already include non-substantive office actions.

Another good strategy - make sure you understand what the office action is raising, and make sure you have addressed all of them. Again - it is an attorney's job to make sure that you have done so. As such, the benefit of a trusted attorney at the ready is genuinely worthwhile.

In conclusion, to ensure that your trademark application moves through the process of examination and publication, be sure to make any necessary amendments or corrections requested by the examining attorney. Doing so may expedite the process significantly and strengthen any chances of your trademark being accepted when all is said and done.

By paying attention to these specific requirements and taking the necessary steps to address them, you can increase your chances of a successful trademark application.

When you receive an office action from the Trademark Office, it means that there are certain requirements or objections that need to be addressed before your trademark application can proceed further. This should not discourage you; instead, think of it as an opportunity to strengthen your application.

Again, our office offers fixed fee bundles to file your trademark application and represent you that will take care of any office actions at no additional fee. To find out more, contact us today!

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About the Author

Dragan Dan Ivetić

DRAGAN DAN IVETIĆ was born and raised in the Chicago suburbs, and wanted to become an attorney to help people from a young age.  He received a bachelor's d...


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