Office Actions

Office Actions

---

The First Office Action must be Complete

If an Examiner determines that a mark is not entitled to registration, or that amendment is required, the Examiner will notify the applicant in a written Office action, or by email or telephone call, which is then followed by the Examiner’s written official action.^[1]TMEP § 705.   The Examiner must inform the applicant of all grounds for refusal and all requirements for amendment (except for “use” issues arising from an amendment to allege use or from a statement of use in Section 1(b) intent-to-use applications).^[2]TMEP § 704.01. It is the policy of the USPTO to avoid a piecemeal examination process, requiring an Examiner to state all possible grounds for refusal and all requirements in the first Office action.^[3]Id.   The USPTO will not issue a new refusal or requirement that could or should have been made in the first Office action unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act and its applicable rules.^[4]TMEP § 706.

The Examiner must also clearly explain each refusal and further application requirements and, if possible, provide suggestions of how the applicant can cure the issues raised in the Office action.  For example, if the Examiner finds that the identification of goods/services is indefinite, the Examiner must explain why the identification is not acceptable and suggest an acceptable identification of goods/services or propose amendments that will address the issue.

Types of Office Actions

A written Office action may be one of a variety of styles:

1. An examiner’s amendment in which the Examiner formally amends the application;^[5]TMEP §§ 707-707.03.
2. A priority action explaining the requirements already discussed with the applicant by phone;^[6]TMEP §§ 708-708.05
3. A letter explaining each ground for refusal(s) or requirement(s);
4. An examiner’s amendment combined with a priority action; or
5. A suspension notice (usually where a prior-filed application for a conflicting mark is still pending).^[7]TMEP §§ 716-716.06

Applicants who have authorized communications by email will receive notice and access to an Office action via a link in an email from the USPTO.

Note that, for applicants who have authorized communications by email, a copy of the Office action will not be attached to the email or mailed to the applicant, so it is important to download and/or print the Office action in the event online access becomes an issue at any time.

Format and Style of Office Actions Generally

In drafting office actions, Examiners use standardized form paragraphs set by the USPTO, use the actual language from sections of the Trademark Act that are the bases of refusal, then add language specific to the facts and circumstances of the application and the Examiner’s suggestions and/or requirement(s), if any, to overcome the refusal to register.^[8]TMEP § 705.01.  When deficiencies in an application are not complex and easily remedied by amendment, the Examiner should offer examiner’s amendments (where the Examiner can simply amend defects in an application, usually upon receiving consent from the applicant to do so), and “priority actions” (providing for expedited examination of responses to office actions that are received by the USPTO within 30 days) so that applications may proceed more quickly through the examination process.  Examiner’s amendments and priority actions are discussed further below.

Generally, Office actions include:

• Six-month response clause so that it is clear that the applicant must timely respond to Office action to avoid abandonment of the application;
• Search clause if it is a first Office action, or if the applicant has not previously been advised of the results of a search for conflicting marks;^[9]See TMEP § 704.02
• Full discussion of each issue separately, stating the reasons for the refusal and supporting citations to the relevant statutes, rules and the TMEP
• Reference to all evidence that the Examiner relies on in its action, refusals and/or requirements, proper citations to such evidence, and copies of such evidence;
• Any pertinent advisories or specifically described requirements or actions that the applicant may take to address issues and put the application into condition for publication or registration;
• If evidence is obtained from a research database, an indication of the specific search that was conducted.  The Office action should indicate the libraries and/or files that were searched and the results.  If the Examiner does not review all of the documents located in a search, the record should indicate the number of documents that were reviewed.
• Internet evidence:  Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. 

The Search Clause in an Office Action

If an Office action issues, applicants should want to know, first and foremost, if the Examiner found any conflicting marks that are already registered or previously applied for under the Trademark Act, 15 U.S.C. section 1052(d) (hereinafter “Section 2(d)”).  If the Examiner finds no such conflicting marks, the Examiner must provide a written “search clause,” that is, a written statement informing the applicant that no conflicting marks have been found.^[10]TMEP § 704.02   If the Examiner is unable to conduct a search or examine the application properly due to lack of adequate information, the Examiner must specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received.^[11]Id.   For example, if the description of some of the goods/services in an application are so indefinite that the Examiner cannot properly search for conflicting marks in connection with similar goods/services, the Examiner may issue only a partial refusal in its office action, specifically indicating the goods/service for which a search has been conducted and limit its Section 2(d) refusal to those goods and services.  However, if the description of all goods/services are so indefinite that a search cannot be conducted, the Examiner will issue a full refusal, requiring amendments to the goods/services and advise that further action on the merits of the application with regard to likelihood of confusion will be undertaken if and once the applicant submits a sufficiently definite identification of goods/services.

The Final Office Action

After applicant submits its response to any Office action and reexamination of an application or reconsideration of a refusal to register, the Examiner may issue a final Office action, whereupon applicant’s response is limited to:

1. Compliance with any requirement;
2. Request that Examiner reconsider the final action;
3. A petition for relief to the Director if permitted by Section 2.63(b); and/or
4. A timely filed appeal.^[12]TMEP § 714 for Final Actions; 37 C.F.R. § 2.64.

During the period between a final Office action and expiration of the time for filing an appeal, the applicant may request the Examiner to reconsider the final action.  The request must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner attorney.  

The filing of a request for reconsideration will not extend the time for filing an appeal or petitioning the Director for relief, but normally the Examiner will reply to a request for reconsideration before the end of the six-month response period if the request is filed within three months after the date of the final Office action.  

If an applicant of a Section 1 (b) (intent to use) application files an amendment to allege use under Section 2.76 during the six-month response period after issuance of a final action, the Examiner shall examine the amendment.  Again, the filing of an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, an appeal to the TTAB, or a petition for relief to the Director.

If, as a result of the examination of the amendment to allege use under §2.76, the applicant is found not entitled to registration for any reason not previously stated, applicant will be notified and advised of the reasons and of any formal requirements or refusals.  The Trademark Examining Attorney shall withdraw the final action previously issued and shall incorporate all unresolved refusals or requirements previously stated in the new non-final action.

For a second Office action to be made final, all requirements or refusals must have been made in the first Office action.  No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final. Thus, if the Examiner makes a new refusal or requirement in a second or subsequent action, a repeated refusal or requirement may not be made final, but instead should be maintained.

A final action is appropriate when the Examiner has previously raised all outstanding issues and the applicant has had an opportunity to respond to them but has not done so.^[13]TMEP § 714.03   Second Office actions should be final actions whenever possible for efficiency.

Form of the Final Action

When making an action final, the Examiner must restate any requirements or refusals that remain outstanding, and must cite the rule(s) and/or statute(s) that provide the basis for these refusals or requirements.^[14]TMEP § 714.04   The Examiner should place all evidence in support of his or her refusal in the record at the time the final action is issued.  The final action should include a clear and unequivocal statement that the refusal or requirement is final.  When there is more than one ground set out as the basis for the final action, the action may begin or conclude with a paragraph containing wording such as “This action is made FINAL” or “This is a FINAL action,” which covers all grounds.

The final action must also mention any refusals or requirements that have been obviated, withdrawn, or satisfied.^[15]TMEP § 713.02.   The Examiner must include a statement that the only proper response to a final action is an appeal to the TTAB or a petition to the Director under 37 C.F.R. §2.63(b), or compliance with the outstanding requirement(s)^[16]37 C.F.R. §2.64(a) .  Again, a final action must include a six-month response clause so that it is clear that the applicant must file a timely response to avoid abandonment of the application.

Priority Actions

A priority action is a type of office action that issues following a telephone conversation, email exchange or in-person interview with the applicant or its attorney, discussing issues and what actions can be taken by the applicant so that the application is in a condition for publication for opposition or registration.  Priority actions are usually not used if there are statutory refusals to registration.^[17]TMEP § 708.04   A priority action still needs to include all of the necessary elements of an office action set forth above, but responses may be addressed on an expedited basis so that the application might proceed more quickly through the examination process.^[18]TMEP § 708.03

An Examiner may issue an office action that combines an examiner’s amendment and priority action, if the requirements for both have been met.  The examiner’s amendment portion reflects the authorized amendments, and the priority action portion addresses the refusals and requirements that remain outstanding and to which the applicant must still respond.  An Examiner may not issue a “no call examiner’s amendment/priority action” because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner (licensed attorney authorized to practice before the USPTO).