Office action

In the United States, an Office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark. The expression is used in many jurisdictions.

Formally, the "O" is supposed to be capitalized, since it refers to the U.S. Patent and Trademark Office.

In United States trademark law, an Office action is issued by an examiner for the United States Patent and Trademark Office (USPTO), rejecting an application to register a trademark. An Office action typically includes one or both of two elements. The first possible element is the category of "informalities", matters such as an inadequate sample to show use of the mark, providing insufficient information with respect to the nature of the entity seeking the mark (for example, failing to name the partners in a partnership), or providing insufficient information for the examiner to determine what, exactly, the goods and services provided by the applicant are.

The second possible element of an Office action is an actual basis for rejection of the mark itself. The most frequent bases are likelihood of confusion with an existing registered mark and genericness or descriptiveness of the mark for which registration is sought. Rarely, a mark will be rejected as "immoral or scandalous", usually if it contains sexually suggestive terms, or vulgarities, for example the rejection of a logo with a defecating dog in Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635.

When an Office action is issued, the applicant has six months to respond to the Examiner. If the Office action was issued with respect to "informalities", the response may simply be the correction of these matters by providing additional information. If the action is premised on a defect in the mark itself, such as likelihood of confusion, genericness, or descriptiveness, the applicant may need to present evidence and legal argument to overcome this rejection. If the Examiner is not convinced by the evidence submitted, a final Office action will issue. This may be appealed to the Trademark Trial and Appeal Board. A final Office action is also known as a filing refusal.

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