Receiving a patent office action is never good news, as it means that there is an issue with your patent application. It does not have to mean the end of your patent, but attempting to navigate the legal issues surrounding it on your own often results in a denied application.
Responding to a patent office action requires a strategic approach, which means it is best to seek out the help of a trademark attorney to assist with the process. Gearhart Law is a New Jersey trademark, copyright, and patent law firm with decades of experience, so do not hesitate to contact us today to discuss how we can help with your patent office action response.
Understanding a Patent Office Action
A patent office action is an official legal notice from the U.S. Patent and Trademark Office (USPTO). Many types of these notices are used to inform you that there is some type of legal issue with your trademark.
The most common types of patent office actions are nonfinal and final. As the names imply, a final patent office action is the last notice sent to inform you of legal issues. A failure to provide the needed response typically results in a denial.
A nonfinal action is usually the first notice you will receive, but in some cases, you might receive more than one nonfinal action. These can take the form of an initial notice of legal issues or a follow-up to a previous response.
There are also five other types of patent office actions commonly issued by the USPTO, which are as follows:
- Examiner’s amendment
- Suspension letter
- Priority action
- Suspension inquiry
- Notice of incomplete response
These other types of patent office actions are less common than nonfinal and final actions.
An examiner’s amendment and a suspension letter, in particular, are notices that do not require a response. The first is to inform you that changes to your application have been approved. The second lets you know that your application has been suspended for external reasons, so it is a good idea to at least consult a trademark attorney for advice on moving forward.
Most other patent office actions require a prompt and appropriate response. Without one, your trademark application is put at risk of denial.
Responding to a Patent Office Action
The USPTO handles responses to minor issues over the phone and by email. However, most of the time, the legal issues at the center of a patent office action are not minor. Under these circumstances, you must use the online Trademark Electronic Application System (TEAS) to submit the required forms.
You have up to three months to submit a response to a patent office action, but a response is not as simple as completing an online form. There is likely a significant issue with the legality of your trademark, which means that your best chance of submitting a satisfactory response means allowing an experienced trademark attorney to understand the issue and respond on your behalf.
How a Trademark Attorney Can Help
The reasons behind a patent office action are rarely easy to understand, which means that it is always best to consult an experienced trademark attorney to comprehend the legal issues for the notice. A lawyer can help by clarifying the problem, examining the documents, and identifying how your response can satisfy the legal requirements of the USPTO.
The exact way in which a trademark attorney will help with your response may depend on the reasons for the action. Some of the most common include the following:
- Definite identification of goods and services
- Disclaiming a portion of your trademark
- Specimen refusal
- Likelihood of confusion refusal
- Descriptiveness refusal
- Commonly used phrase refusal
Within each of these categories, there are a variety of reasons why your trademark application will need to be modified. Furthermore, the USPTO often lays out strict rules for what changes you can and cannot make, and you cannot alter changes you submit.
Altogether, it is easy to see how the process of responding to a patent office action can lead to confusion and mistakes. Hiring an experienced trademark attorney to handle your response is the best way to effectively and efficiently resolve the legal issue.
Gearhart Law Knows Trademark Law
Gearhart Law has been a leader in trademark law in New Jersey for decades. Our experienced trademark attorneys have ample experience helping clients navigate the many challenges that arise during the trademark application process.
We also assist in a variety of other trademark-related legal concerns, such as:
- Trademark examination
- Trademark registration
- Trademark infringement
- Trademark monitoring
- International trademark protection
As a firm that focuses on the legal area of intellectual property law, we also assist clients with legal issues related to patent and copyright law, as well as general commercial legal concerns.
Call Our New Jersey Trademark Attorneys Today
Gearhart Law’s experienced trademark attorneys understand how to quickly identify and resolve the legal issues that form the basis for a patent office action. We are available to review your case and advise you on the steps necessary for a successful trademark application. Contact us today to schedule a consultation.