After you have applied for a trademark registration with the United States Patent and Trademark Office (USPTO), the trademark is examined by an attorney that works for the USPTO. These Examining Attorneys are charged with making sure (1) all trademark applications follow all formal rules for applications, and (2) no trademarks are trying to be registered for whatever legal reason. When the Examining Attorneys encounter a trademark application that they cannot approve, they issue a communication to the applicant explaining why it cannot move forward.
These communications are called Office Actions, and they come in two flavors – Substantive and Non-Substantive.
A Non-Substantive Office Action is a letter from the Examining Attorney that is not so much rejecting the trademark as pointing out a mistake or omission that needs correcting. This can be include changing the goods or services, needing to disclaim a part of the trademark, or just asking for more information. These usually don’t need as much effort or legal knowledge to overcome. However, the Non-Substantive Office Actions can still be complicated if you’re not familiar with trademark law and the application procedure.
A Substantive Office Action is more challenging. An Examining Attorney rejects an application because they think that the applied-for trademark shouldn’t be registered for some substantive legal reason, and there are many reasons. The most common Substantive Office Actions are for likelihood of confusion or for being “merely descriptive.” Many pro se applicants (doing it without the assistance of an attorney) abandon their applications when they get a Substantive Office Action. They can be quite intimidating, with a lot of legal language, case law, and statutory language.
Sometimes, the Examining Attorneys get it wrong, or just don’t see a reason that would overcome their objections, even though it exists. Sometimes, the Examining Attorneys reject a trademark, they’re (probably) right, and there’s nothing you can do about it. It is hard to know the difference, but an experienced attorney will have a better chance of getting past a Substantive Office Action.
If you get an Office Action, you have a limited window of time to respond to it, or you will abandon your application. Do not delay in getting help if you need it.
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