What are the different types of office actions?

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Written by Igor Demcak

Founder & Trademark Attorney

We can divide trademark office actions into final / non-final and substantive / non-substantive.

The final vs non-final designation refers to the stages of the examination and communication between the examining attorney at the trademark office and the applicant. A non-final office action occurs when the examining attorney raises issues or concerns with the trademark application. The applicant can respond and address the identified issues. If the examining attorney determines that the applicant's response to the non-final office action is insufficient or the issues have not been adequately resolved, they may issue a final office action. If the applicant fails to resolve all outstanding issues in a response, the trademark application may be abandoned.

Whether an office action is substantive or non-substantive depends on the nature of the reason for its issuing. Substantive reasons for trademark dismissal include problems with the mark itself, such as lack of distinctiveness, similarity to an already registered trademark, inclusion of prohibited symbols, etc. On the other hand, if a reason for dismissal is non-substantive, it means the problem is formal or administrative, such as incorrectly entered information, improper specimen or missing payment. Non-substantive office actions are usually easier to overcome than substantive ones.

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