What Do I Do When I Get An Office Action Letter? with Erica DiAngelo of DiAngelo Law

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I got an OAL: Is this a death sentence?

In short, no, an office action letter is not a death sentence. When it comes to filing a trademark for your business, there isn’t a guarantee that everything is going to go smoothly the first time around. After filing your trademark you may receive an Office Action Letter from the USPTO (US Patent & Trademark Office). If you happen to get one of these OAL’s in the mail, don’t panic. There are always ways around it.

What Exactly is an Office Action Letter?

An Office Action Letter is a preliminary refusal of your trademark application. This can happen for a variety of reasons. After the USPTO (US Patent & Trademark Office) reviews your application, they will indicate a reason for refusal and solutions to proceed with filing your trademark. Usually, a refusal falls into one of two categories: administrative or substantive. Most commonly, refusals fall into the administrative category.


One example of an administrative refusal might stem from not disclaiming that a piece of your mark is not registerable. For instance, your business is called “Joe’s Coffee Shop.” If you neglect to disclaim that the term “coffee shop” is not registerable, then your trademark might get rejected.

Another administrative roadblock can happen when foreign words are being used in trademarks. It’s frustrating to wait four months for a refusal letter over something as small as this, but the good thing is that this is fairly easy to overcome with a bit of extra paperwork.


When it comes to substantive refusal, things get a bit more tricky. Substantive refusals can happen when there is a perceived likelihood of confusion between your trademark and others that are already registered. Another reason for a substantive refusal office action letter may be due to descriptiveness and geography. Unfortunately, if this happens, there may not be much for you to do. Those rulings are hard to overturn.

What to Do After You Recieve the Office Action Letter

Should you get an office action letter, it’s coming from the desk of the Trade Mark Examiner. Their job is to make sure trademarks are not too similar and each filer’s integrity is protected. If your business receives one of these letters it’s time to do an evaluation. Your evaluation will require legal analysis and an understanding of trademark law. Understanding landmark cases that have changed the way examiners are required to make these evaluations will only strengthen your case.

When defending the originality of one’s trademark, the landmark DuPont case is often referenced. This case birthed the DuPont Factors which examiners use today to determine whether or not a business’s branding is able to be trademarked. The burden of proof falls on the applicant. To show that their trademark does not infringe on another’s or invoke confusion,  use the requirements outlined in the DuPont factors.

We always recommend consulting an expert and doing your research before paying to file your trademark. Contact My Clone Solution if you need an introduction to a tax attorney.

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