FREQUENTLY ASKED QUESTIONS You Received an Office Action. Now What?

An office action can come after the trademark office rejects your trademark products application.

So you filed your trademark application, you got a rejection letter from the trademarks examiner. Now what? And really, there are 3 possible options here from a trademark services perspective.


Option 1. Surrendering Your Trademark Products

Option number one: you could surrender and do nothing. You will have received several months, it's usually 6-months both in Canada and the U.S. to respond to the objections from the Trademarks Office. If you don't respond within that timeline, then your trademark will be deemed abandoned. And that's it. 

Really, it's where the journey stops. And a lot of self-represented applicants, that's really what happens with their trademark applications. They do everything themselves, they file the trademark application, then they get a letter from a trademark examiner and they have no idea how to respond to that. And they just let it go. 

Depending how much you’re willing to fight for your trademark product, it could be the end for you as well.

Option 2. Fixing Your Trademark with a Trademark Company

The second option is, if the letter of the trademark examiner—it's usually called an office action - gives you an idea of how you can fix your trademark application to satisfy whatever requirements they have. 

So the second option is for you to follow their advice. It is not really advice, but if they tell you what is missing from your trademark application and sometimes they even offer a possible solution to that if you are ok with that. That's another way to go. 

So basically, you fix your trademark application and they approve it. 

Working with a trademark company like ourselves is an easy way to get help fixing your trademark application.

Option 3. Three Variant Options for Trademark Services

And the third option is for you to come back to them with an argument as to why they are wrong and you are right. This can be done in many ways. 

One is you can simply argue with them. If you have an objection that you think does not make sense, you think it is not based on law, you just write back to them and contest their ruling, explaining why you think your trademark product is registrable. 

Remember, making arguments like these can be a lot easier with the help of an experienced trademark company like ours.

A second option is, let's say, for example, in the case of them raising an objection based on another previously registered trademark.


What you could do in many cases is to obtain consent from that other trademark owner and if they are ok with that - obviously they are not obliged to give you that consent but if you managed to get their consent - you can go back with that consent to the trademark examiner. You can say, "Look, these guys who you say our trademark is confusingly similar with, they don't mind that we have this trademark, so please approve it." 

Citing something like this can be an easy way to expedite getting a trademark product approved.

Another variant of this third option would be for you to get that other previously filed or registered trademark canceled based on non-use or some other reasons. 

So if you can successfully kick out that other trademark application or registration that is in your way, if it is no longer registered, then again, you can go back to the Trademarks Office and say, "Look, you said our trademark application is confusingly similar with that other application or registration. Now that trademark registration or application is no longer active. So there is nothing that should be stopping you from approving our mark."

So all of those things are really what trademark agents and trademark attorneys do after the trademark gets filed. Sometimes this can be the easiest way to sidestep the previous trademark product problems.

Filing a trademark application is easy. It is deceptively easy because when you file it, you just wait for several months until the trademark examiner gets back to you.

In 65 -70% of the cases, depending on the year, you will initially get an objection letter called an office action that lists the things that they don't like about your application.

So the real work of trademarking firms starts when they either fix the trademark application or they fight with over the existing trademark application with a Trademark Office. That’s the kind of work we want to do for you.


Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.