I Received a Post-Registration Office Action in My Trademark Registration. Now What?

Photograph of Bear Creek Falls in Ouray Colorado
Bear Creek Falls in Ouray Colorado

Trademark owners must make periodic filings to keep their trademark registrations alive.  These are post-registration maintenance filings, and failure to make them correctly will result in the issuance of a post-registration office action and then potentially the cancellation of a trademark registration.

Post-registration maintenance submissions are required on the fifth anniversary of registration, on the tenth anniversary of registration, and then again every tenth anniversary thereafter.  Those submissions involve renewal requests as well as verification that the mark owner is still using the trademark.

To verify your continued use of the trademark, you have to submit proof of use along with a sworn statement that you have been continuously using the mark.  Like pre-registration statement of use filings, you have to swear that you are using the trademark on each identified good or service registered.  In some cases, that might only be one or two products.  However, some trademark registrations list dozens if not hundreds of products and services.  You must be sure that you are using the mark still on those dozens or hundreds.

The Trademark Office reviews these post-registration submissions to ensure they actually do show use of the mark.  Historically, the Trademark Office has given pretty quick review of the proof submissions.  I have seen filings that, had they been submitted as part of the application process prior to registration, would certainly have been rejected as insufficient, yet were accepted by the Trademark Office in the post-registration context.

In the past year or two, however, the Trademark Office has become more stringent in its examination of maintenance filings, and it issues post-registration office actions much more frequently than it used to.  Because of this, I now usually counsel clients to submit as much evidence of use as possible when filing their maintenance documents.

For many reasons, the Trademark Office has become suspicious of long lists of goods and services in the trademark registrations.  Its job is to ensure that marks that are no longer in use are cleared off the registry.  To that end, the Office conducts random checks of maintenance filings.  This often results in a post-registration office action.

A post-registration office action, like an office action issued during examination of a trademark application, is a rejection of a filing, but it is issued after the registration of the trademark rather than before.  The Trademark Office can send a post-registration office action for many reasons, but the ones we see most frequently question whether the mark is actually in use with all the registered goods.  They typically look like this:

Excerpt from a Trademark Post Registration Maintenance Office Action.

An office action like this gives the trademark owner 6 months to respond (oddly, the Trademark Office has not yet shortened the post-registration office action timeline as it has for pre-registration office actions).  However, that 6-month timeframe does not apply to the use of the specimen.  Rather, when you respond to office action, you must submit a specimen within 6 months of the office action’s issue date AND you must certify that the specimen you submit was in use before the expiration of the original maintenance window.  In other words, the office action does not extend the maintenance window at all.

For example, imagine your trademark registration has been registered for some time.  The first maintenance filing must be made between the 5th and 6th years of registration.  If you file just before the deadline, around the 6th anniversary, and the Trademark Office issues a rejection 3 months after the 6th anniversary, you have to respond within 6 months.  Your response must also include a specimen that was in use between the 5th and 6th years.  You cannot submit a specimen that was in use between the 6th year and the 6-year, 3-month or the 6-year, 9-month mark.

The Trademark Office is currently taking quite a long time to review maintenance filings (see the tracking dashboard here), and it is issuing post-registration office actions much more frequently than it used to.  Because of this, filing near the end of any maintenance window is extremely risky.  Best practice is to submit a maintenance filing that is complete, robust, includes specimens for all registered goods and services, and is filed as early as possible in the maintenance window.

If you have any questions about post-registration office actions, or if you need help or peace of mind filing maintenance documents in your trademark registration, please contact Phoenix trademark attorney Tom Galvani at 602-281-6481.

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