After registration of your trademark, you will occasionally have to file to renew your federal registration. It is a good idea to work with a trademark attorney on these renewals to ensure that everything is done properly and all requirements are met. If there is an issue with your renewal filing, the Trademark Office will issue what is called a “post-registration office action.” Should that happen, you will need to promptly file a response, or your registration will be cancelled.
What Is a Post-Registration Office Action?
If you are already familiar with office actions, then you’ve probably figured out that post-registration office actions are just office actions that are issued after you already have a registration. If you have not heard of office actions, essentially they are a list of issues the Trademark Office has with your application or registration that must be addressed. They may constitute formal rejections of a trademark application, but they can also be minor administrative issues that are easily fixed.
Why You Might Receive a Post-Registration Office Action
There can be several reasons that you might receive a post-registration office action. However, the most common reason would be if there is an issue with the specimen that you submitted with your renewal documents. If the specimen does not properly show how your trademark is being used with your products/services, the Trademark Office will issue a rejection. You will then have the opportunity to provide a substitute specimen, although there are certain requirements for doing so.
Responding to a Post-Registration Office Action
At the time of writing this post, a trademark owner has six months from the date a post-registration office action is issued to file a response. However, this period will be reduced to only three months beginning on October 7, 2023.
Failure to properly address any issues raised in an office action (in a timely manner) will likely mean that your registration will be cancelled. If that happens, you can file a new application, but there is no guarantee that it will be approved and become a registration again. Even if you file a new application and are successful, you will lose the benefit of the priority date of your previous registration (which goes back to its filing date). Practically speaking, that means you will take years off of the lifespan of your registration. You may no longer have a claim against someone that starting using a similar trademark prior to the filing of your new application.
Have You Received a Post-Registration Office Action?
Obviously, it is very important if you have already done the work of going through the trademark application process that you do not let your registration be cancelled and have to go through the process all over again. For that reason, you should consult with an attorney should you receive a post-registration office action. If you would like assistance with responding to a post-registration office action, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
