Office Actions: A Brief Insight

An office action is a letter sent by the (USPTO) United States Patent and Trademark Office. An examining attorney will list any legal issues with your chosen trademark, as well as the application itself, in this document. Before we may register your trademark, you must resolve all legal issues in the office actions.

An examining attorney may issue an office action that requires you to correct legal issues with the application itself (“requirements”) by making minor changes. It includes clarifying your goods or services. An examining attorney may also issue legal rejections (“refusals). It includes refusing your application because your chosen trademark is likely to be confused with another registered trademark. However, it is possible that you may not always be able to fix a requirement or a rejection.

To resolve important legal issues, some office actions demand a written answer. However, some propose contacting or emailing the examining attorney to resolve minor legal issues. Still, others may require no response at all. Examine your workplace activity carefully to see if and how you should respond.

Also Read: The Art of Reading an Office Action

Non-Final Office Actions

A non-final office action poses a legal issue about your application. You have a time of six months from the date of receipt of this letter to respond. Your application will move on to registration if your response resolves each legal issue raised in the non-final office action and does not create any new issues. If your response does not resolve all the issues and does not create any new ones, you will receive a final office action. If your response creates a new issue, the examining attorney will give you a new non-final office action to address the new issue as well as any pending refusals and/or requirements already stated.

Final Office Actions

The Final office action presents a legal issue about your application. Only when the examining attorney has raised all legal issues with you at least once will you receive a final office action. It’s your last chance to respond to a final office action during the application process when you receive a final office action. Your application will move forward to registration if your response addresses each legal issue raised in the final office action. If it doesn’t, unless you file an appeal with the TTAB (Trademark Trial and Appeal Board) in a timely manner, the application will be abandoned. TTAB appeals and direct responses to final office actions are frequently filed by applicants.

Also Read: How to Make Money through Patents


An ISR (International Search Report) is issued by an ISA (International Search Authority) chosen at the time of filing the PCT application under the requirements of the Patent Cooperation Treaty (PCT). Also, the ISR includes a list of identified documents that has relevance to the patentability of the claim in the PCT application. Along with the Search Report, the ISA also provides a Written Opinion that serves as the foundation for the ISA’s determination of claim patentability.

We can help you!

We provide full Official Action Response services so you can concentrate on other important areas of your application. Also,wWe can send individual notifications for each action, provide reports describing each action received and filed in each timeframe, or update a file management system or database instead of sending formal alerts with this service. For more queries, please visit our service page.

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