Office Actions

At the Law Offices of Joseph C. Messina, our attorneys have years of experience handling trademark prosecutions, including responding to office actions. The firm works with clients who may have been representing themselves at the United States Patent &Trademark Office when they encountered a problem, and subsequently seek our counsel. The firm also represents clients who may have attempted to use a legal service to assist them with their federal trademark application and then find that the legal service did not have the expertise necessary to properly prosecute the trademark application. If an obstacle does arise in the process, our attorneys know how to handle an Examining Attorney’s refusal.

In spite of all efforts to avoid such problems, there are times when an Examiner might find some issue with your application. If that happens a written letter known as an "Office Action" is issued wherein the Examiner will detail the nature of the issue he has with the application. An applicant has six months to respond to an Office Action. If no response is filed, the application will be automatically abandoned. On your behalf, we will respond to the Office Action and deal with the cited concerns. Once the Examiner finds that the issues are resolved, he will approve the application for publication in the Official Gazette of the United States Patent and Trademark Office. In approximately two months subsequent to being approved by the Examiner, the application will be published for opposition. This allows third parties who believe they will be damaged by registration of your Mark, to oppose the registration by filing a Notice of Opposition or a Request for an Extension of Time to Oppose within thirty days of the publication of the trademark in the Official Gazette. An opposition is similar to a lawsuit, but conducted primarily through written documents. We will advise you accordingly should this occur during the prosecution of your trademark. If no opposition or Request for Extension of Time is filed within the time specified by law, then the trademark will be registered if the application was based on actual use in commerce.

If the application was filed on an Intent-to-Use basis, then a Notice of Allowance will issue. This is a notice issued by the USPTO informing an applicant that their Intent to Use Application has been approved pending filing and acceptance of a Statement of Use with evidence of use within six months of the issuance of the Notice of Allowance. If you will not commence use within this period of time, we will file a Request for an Extension of Time to File a Statement of Use on your behalf. An extension, if granted, will be for an additional six-month period. A total of five extensions can be requested. Once a Statement of Use is filed and approved by the Examiner, the applicant will be issued a Certificate of Registration. At this time, our firm will send you a detailed letter of instructions regarding your federal trademark registration, along with the original Certificate of Registration. You may also engage our firm’s services to file the mandatory post registration documents with the USPTO.

Contact The Attorneys At The Law Offices Of Joseph C. Messina

Send us an e-mail or call us at 914-381-2728 to schedule a free consultation. We work with clients in New York, Connecticut and across the nation.