Wednesday, January 8, 2014

Dealing with USPTO Office Action Letters - confusing extraneous information

So you filed a trademark application without using a lawyer (oops!) and now you've received an "office action" from the USPTO.  At first when you read it, it may sound like a bunch of boiler plate, and that's because it is - at least, a good part of it. 

There are certain bits of prose that seem to find their way into a good many office actions that are probably intended to assist the trademark applicant in formulating a response - but often these pearls from the USPTO can be downright confusing to the uninitiated. 

One of my favorites is when the office action requires an amendment to the identification of goods or services, because the original listing as filed included something that was arguably ambiguous.  The examining attorney will often helpfully include a suggested amended ID of goods/services that would be acceptable to the USPTO, but following that helpful suggestion there is often a bunch of mumbo- jumbo about requirements for adding classes of goods and services, including requirements for specimens and filing bases.  This may be appropriate where the examining attorney's suggested amended ID of goods would necessitate adding classes to the application, but where the suggested amended ID would not lead to the addition of another class of goods, this information cannot be anything but confusing.

The take-away:   Read your office action carefully, and don't let extraneous information boggle your mind.  And of course, your best bet may be to call a TM attorney to prepare and file the response on your behalf.  We spend a good portion of our lives reading these things!

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