For many small business owners, it can feel overwhelming to read an Office Action, which is a formal correspondence sent via email from the USPTO.  Some people initially feel like it is written in a different language! 

Here are the steps to breaking down how to read these correspondences.

The first step is to determine whether this is a Non-Final Office Action or a Final Office Action.  

• The Non-Final Office Action is your first opportunity to respond to issues with your application.  Applicants provide a “Response” to the Office Action that hopefully resolves all of the issues.
• If these issues are not resolved in your first response, and no NEW issues are raised by your Response, you’ll receive a Final Office Action from the USPTO, which will explain why your response wasn’t sufficient.  You will have an opportunity to respond to the Final Office Action through a Request for Reconsideration. ‍

The Non-Final Office Action and Final Office Action have two things in common.

• First, both have a strict deadline in which you MUST respond within six months.  If you don’t respond within these deadlines, you risk your application abandoning.  
• Second, both will provide you with the name, phone number, and email of the Examining Attorney who is reviewing your file.   This information appears on the bottom of the Office Action in the signature line.  While this attorney cannot provide you legal counsel, he or she can answer basic questions about your file.  This information is included at the bottom of both Office Actions, where the trademark examining attorney signs his or her name.

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So, let’s start with a Non-Final Office Action.

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Some Office Actions specify “Search Results” in the beginning.  If your Office Action states that the Search found no conflicting trademarks, that means the trademark examining attorney did not find any registered trademarks, or prior pending applications, that are confusingly similar to yours, which is a great sign!  

If it doesn’t have this section, it will likely mean you have a Section 2(d) Refusal to overcome.

Other Office Actions might mention a Prior Filed or Pending Application Advisory.  This means that there is another trademark that MIGHT be confusingly similar to yours that was filed BEFORE your trademark, but has not yet been registered.  What that means is the trademark examining attorney will make that determination later on, if and when that other trademark registers.  

The Office Action will then list ALL of the issues with your application.

Office Actions will often have a “SUMMARY OF ISSUES” section, which clearly lists all of the issues.  Other Office Actions will jump into the Issues by immediately listing the first issue, which is often underlined or in bold.

As an example, with an Office Action, you might see three issues to resolve at the top under “Summary of Issues”:

• Section 2(e)(1) Refusal – Merely Descriptive
• Prior-Filed Application
• Specimen Refused – Mere Advertising for Goods

If you scroll down, you’ll see each of these issues is outlined and bolded.  Each section provides an explanation of the issue.

Then, at the end of the Office Action is information on how to contact the trademark examining attorney on the file, who you can contact with non-legal questions.

Now, let’s move onto a Final Office Action, which is what you will receive if you respond to a Non-Final Office Action, and the trademark examining attorney determines that you have not resolved all of the issues.

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The Final Office Action will clearly show that it is a FINAL Office Action.  The introductory paragraphs often specify which issues are still unresolved, and which issues were resolved or withdrawn.

You’ll likely see a Summary of Issues at the top of the Final Office Action, which lists the unresolved issues.  Let’s pause here because this section is very important.

It’s important because the Summary of Issues lists the particular issues with your application.  

Then, if you scroll down, you’ll see a larger, more detailed explanation for each issue.  Each of these issues is usually underlined or in bold.  Often, the trademark examining attorney will also provide an explanation as to why the Response to the Non-Final Action did not satisfy the requirements or overcome the refusals.

And, just like Non-Final Office Action, the end of the Final Office Action provides information on how to contact the trademark examining attorney handling your file, who you can contact with non-legal questions.