An office action is a letter wherein the examining attorney sets forth a trademark application’s legal status. In the letter the attorney will inform an applicant whether the Trademark Register search yielded any conflicting marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to set any procedural requirements.
Applicants must respond to an office action within 6 months from the date the office action is mailed. If applicants fail to do so, their applications will be declared abandoned. There are two types of office actions: non-final and final.
A non-final office action raises new issues and usually is the 1st phase of the examination process. An examining attorney will issue a non-final office action after initially reviewing the application. If a new issue arises after the applicant responds to the 1st non-final office action, the examining attorney will issue another non-final office action to set forth the new issue(s), and to continue any that remain outstanding.
A final office action is the last office action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only responses to a final office action are (1) compliance with the requirements or, (2) an appeal to the Trademark Trial and Appeal Board.