Trademark Office Action
INAPI has raised an objection to your trademark. This does not mean you have lost it.
If you have received a Trademark Office Action from INAPI during the registration process, the situation may seem more complicated. But an Office Action is not a final refusal: it identifies the substantive grounds for refusal raised by INAPI and gives you an opportunity to submit legal arguments before a final decision is issued. The general deadline to respond is 30 business days. If your application is also facing an opposition, both matters must be addressed together at the appropriate procedural stage.
A Trademark Office Action is issued directly by INAPI during the registrability examination when the examiner identifies a potential legal obstacle to registration.
At Start Click®, we respond to Trademark Office Actions for entrepreneurs, companies, and foreign clients, preparing legal arguments designed to overcome the objections and keep their trademark applications moving forward.
Why did INAPI issue a Trademark Office Action?
A Trademark Office Action may be issued for different reasons, including:
✔ Similarity with earlier registered trademarks
✔ Lack of distinctiveness
✔ Use of generic or merely descriptive terms
✔ Likelihood of confusion with an existing trademark
✔ Inclusion of protected elements, names, emblems, or signs that cannot be registered under Chilean law
✔ Other statutory grounds for refusal under Article 20 of the Chilean Industrial Property Law
Unlike a Trademark Opposition, which is filed by a third party—usually the owner of an earlier trademark—a Trademark Office Action results directly from INAPI’s examination of your application. In other words, INAPI itself has identified the legal obstacle.
The Office Action must be reviewed carefully. It is not enough to know that INAPI has “found a similar trademark.” The applicable statutory ground, the registrations cited by the examiner, and the reasoning behind the objection must all be analyzed.
Formal and substantive objections are not the same
A formal objection concerns errors or omissions in the application, such as incomplete information or deficiencies in the identification or filing of the application.
A substantive objection, on the other hand, challenges whether the sign is legally registrable. It may be based on earlier trademarks, lack of distinctiveness, descriptiveness, or another statutory prohibition.
The distinction matters because the response strategy is different. A formal deficiency can generally be corrected; a substantive Trademark Office Action requires legal arguments addressing the registrability of the trademark.
INAPI expressly distinguishes between formal examination and substantive examination within the trademark registration process.
What happens if you do not respond on time?
A Trademark Office Action must be answered within the deadline stated in the relevant decision.
If you fail to respond within the statutory period, INAPI will decide the application without considering your arguments against the objections raised. If INAPI maintains those objections, your application may be refused in whole or in part by a final decision.
This may mean losing the costs already incurred and delaying the launch or protection of a trademark in which you may already have invested in design, advertising, domain names, and market positioning.
That is why both timing and the quality of the legal response are critical.
How we respond to a Trademark Office Action
Every Trademark Office Action should be carefully analyzed before deciding on the appropriate response strategy.
Depending on the objection raised by INAPI, our response may include:
✔ Arguments supporting the inherent distinctiveness of your trademark
✔ Comparative analysis against earlier trademarks cited by the examiner
✔ Arguments based on visual, phonetic, or conceptual differences
✔ Review of the current status and actual scope of the earlier registrations
✔ Assessment of whether limiting the specification could overcome the objection without weakening the protection your business actually needs
✔ Evidence of use, recognition, or acquired distinctiveness where legally relevant to the particular ground for refusal
✔ Review of decisions issued by INAPI and the Industrial Property Court (TDPI) in comparable cases
Our objective is to challenge the grounds raised in the Trademark Office Action and demonstrate why your trademark meets the legal requirements for registration.
Before responding, we assess whether to defend, limit, or reconsider
Not every Office Action presents the same level of risk, and not every objection should be answered using the same strategy.
In some cases, there may be sufficient differences to defend the application in full. In others, limiting certain goods or services may reduce the conflict. An objection may also reveal such a significant registration risk that reconsidering the strategy before incurring further costs is the better commercial decision.
Our analysis focuses on three questions:
- Is there a reasonable legal basis for defending the application?
- What scope of protection can be preserved?
- Will the trademark remain commercially useful after any necessary limitation?
The objective is not simply to file a response. It is to protect a trademark that continues to serve your business.
Trademark Office Action vs. Trademark Opposition
These concepts are often confused, but they involve two different situations:
Trademark Office Action: issued by INAPI during its examination of the application when the examiner identifies a potential statutory ground for refusal.
Trademark Opposition: an adversarial action filed by an interested third party within 30 business days following publication of the trademark application.
Both can occur in the same application. A trademark may simultaneously face an opposition and substantive objections raised by INAPI, requiring the applicant to address both within the applicable procedural deadline.
If your application is facing a third-party opposition instead of—or in addition to—an Office Action, see Trademark Opposition.
How to reduce the risk of receiving a Trademark Office Action
Many substantive objections can be anticipated by assessing the proposed trademark before filing.
Before submitting an application, it is advisable to conduct a Trademark Search in Chile and define a Trademark Strategy to identify potential distinctiveness or similarity issues before INAPI raises them during examination.
This cannot eliminate the risk entirely, but it can significantly improve the chances of your application proceeding without substantive objections.
When a trademark is still being developed, changing it early is usually less costly than defending it after investing in its launch.
Legal advice for Trademark Office Actions
At Start Click®, we advise entrepreneurs, Chilean companies, and foreign clients who receive a Trademark Office Action during the registration process.
Our services include:
✔ Review of the complete application and prosecution history
✔ Detailed analysis of the Office Action
✔ Realistic assessment of the prospects of overcoming the objection
✔ Preparation of legally supported responses
✔ Strategy for continuing the registration process
✔ Representation throughout the proceedings before INAPI
✔ Follow-up through the final decision and assessment of an appeal where appropriate
Our objective is to build the strongest legally available response while preserving commercially useful protection for your trademark.
If INAPI ultimately refuses the application, we can also assess whether an appeal before the Industrial Property Court is advisable.
PreFrequently Asked Questions about
Trademark Office Actions
What is a Trademark Office Action?
A Trademark Office Action is an objection issued directly by INAPI during the examination of a trademark application when the examiner identifies a potential legal obstacle to registration.
Who issues a Trademark Office Action: INAPI or a third party?
INAPI issues the Trademark Office Action. This differs from a Trademark Opposition, which is filed by a third party that considers its rights or interests affected.
What happens if I do not respond to a Trademark Office Action on time?
If you fail to respond within the statutory deadline, INAPI will decide the application without considering your arguments against the objections raised. If the grounds for refusal are maintained, the application may be refused in whole or in part.
Can a Trademark Office Action be overcome?
Yes. An objection may be overcome when sufficient legal grounds exist. The outcome depends on the objection raised, the earlier rights cited by INAPI, and the particular characteristics and scope of the trademark application.
Can I prevent a Trademark Office Action?
Not always. However, a prior trademark search and an appropriate Trademark Strategy can identify many potential similarity, distinctiveness, and specification issues before filing.
How long do I have to respond to a Trademark Office Action?
The deadline is 30 business days from notification of the relevant decision. The application file should be reviewed immediately to confirm the exact deadline and determine whether any opposition must also be addressed.
Do I need a lawyer to respond to a Trademark Office Action?
A substantive Trademark Office Action requires interpreting statutory grounds for refusal, analyzing the trademarks cited by INAPI, and developing an appropriate response strategy. Advice from a trademark lawyer reduces the risk of filing an incomplete response or failing to properly address the examiner’s objection.
What happens if INAPI refuses my trademark application?
The final decision may be appealed before the Industrial Property Court within 15 business days from notification. Before appealing, it is advisable to assess the grounds for refusal, relevant case law, the prospects of reversing the decision, and the commercial importance of continuing to defend the trademark.
Don't let an Office Action end your trademark application
A Trademark Office Action does not mean your trademark is lost, but it does require a timely and well-supported response.
At Start Click®, we analyze the objection and prepare the legal response your application needs to move forward.