Professional advice

The USPTO requires all foreign-domiciled trade mark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the US. So if your permanent legal residence or principal place of business is outside of the US, you will need a US-licensed attorney to represent you in all trade mark matters. For applications filed under the Madrid System, the requirement for a US licensed attorney does not apply to the filing of the application, but applies to any subsequent actions before the USPTO.

Replying to reports

There are several different official letters that the USPTO or WIPO may send you about your application. Your US IP attorney can advise you on specifics, but below is a description of each type and information on how you will be expected to respond:​

Reports from WIPO

Irregularity notice

You may receive an irregularity notice from WIPO if, after reviewing your international application, they find that items in your list of goods and services are too vague, incomprehensible, linguistically incorrect, or incorrectly classified. You may be asked to refine or narrow your goods and services, provide more information, or indicate items are correctly classified in another class.

If you agree to move an item to another class as proposed by WIPO and that class is not included in your international application, you will incur additional fees. The amount payable will be indicated in the irregularity notice. Depending on the issue raised, you will have two to three months to respond to the irregularity notice. It is important that these time frames are adhered to as in some cases not responding in time may lead to your application being abandoned. Any changes made in the international application will not affect your Australian trade mark application or registration.

Reports from the USPTO

Office Action

If there are any issues with your application, the USPTO will send you an Office action. This will include the reason why your registration is being refused or what requirements must be satisfied. In most cases, you will have six months from the date the Office action is issued to respond. If you do not reply within this time frame the USPTO will abandon the application and your fee will not be refunded.

There are two types of Office actions: non-final and final actions. A non-final Office action raises an issue for the first time. A final Office action is issued when your response to the prior Office action fails to address or overcome all issues. Your response to a final Office action generally is either compliance with the requirements or an appeal to the USPTO Trademark Trial and Appeal Board.

Examiner's Amendment

An examiner's amendment is used to confirm in writing any amendments made to an application that you (or your attorney) specifically authorised by phone or e-mail. There is no need to respond to this type of action unless you disagree with the amendment.

Priority Action

After consulting with you (or your attorney) regarding any problems with your application, an examiner will send you a priority action to confirm in writing what was discussed. This type of action will include reasons why your registration is being refused and/or how to satisfy certain application requirements. Unlike an examiner's amendment, you must respond to a priority action within six months from the date the priority action is issued or the USPTO will abandon the application and your fee will not be refunded.

Suspension Letter

A suspension letter is used to suspend action on an application. An application may be suspended for a variety of reasons, such as waiting for a determination regarding a conflicting cited prior/pending application, or waiting for an assignment of ownership to be recorded.You do not have to respond to a suspension letter.

The USPTO will review a suspended case at least every six months to determine whether continued suspension is appropriate. However, you can check the reason for suspension at any time online through the website and notify the examining attorney that suspension is no longer necessary.

Suspension Inquiry Letter

If your application has been suspended for six months or more an examiner may send a suspension inquiry letter to find out more about your suspended application. You will have six months from the date the Suspension Inquiry Letter is issued to respond. If you do not reply within this time frame the USPTO will abandon the application and your fee will not be refunded.

Response Deadlines

Most official letters must be responded to within six months from the mailing/issuing date. In some circumstances, an Office action may specify a different response period. There are no extensions to the deadline specified in an official letter. Examiners have no discretion to extend the time period for filing a response. If you do not submit a timely, complete response to an Office action, the USPTO will abandon the application, the application fee will not be refunded and your mark will not be registered.

How to File a Response

Your US IP attorney will be engouraged to file any responses electronically through the Trademark Electronic Application System (TEAS). All forms filed via TEAS are time/date stamped when received on the USPTO server which helps to determine the timeliness of a document.

You can also submit your response by fax or regular mail. If you choose to submit a response via fax or mail you should address each issue raised by the examining attorney and include your name, trade mark, serial number, law office, and name of the examiner in the body of the response. To ensure that your reply is considered timely you may wish to include a signed, completed certificate of mailing or certificate of transmission with your response. It is important that you keep a photocopy of any correspondence with the signed certificate in the event that the response is lost or misplaced by the USPTO.

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Disclaimer:The views expressed in this video do not necessarily reflect the views and policies of IP Australia and are not intended to be taken as advice. We accept no responsibility for the accuracy or completeness of the views or information posted and we disclaim all liability from those views that may be occasioned directly or indirectly through the use of, or reliance, on those views and information.