An office action (oficio) is a requirement from IMPI about your trademark application: it may ask you to correct formal requirements or point to an obstacle, such as a similar earlier mark. You have two months to respond with arguments and evidence. If you don't, the application is considered abandoned and you lose the fees paid and your priority date.
The most common types of office action
| Type | What it means | How it's usually resolved |
|---|---|---|
| Formal requirements | Missing data, an ambiguous description of goods, or a document that doesn't comply. | Correct or clarify; usually simple if answered well. |
| Prior mark cited | IMPI found an earlier mark it considers similar to yours. | Argue differences, narrow the goods, a letter of consent, or attack the cited mark. |
| Descriptiveness | IMPI considers the mark merely describes the product or is generic. | Argue distinctiveness, file evidence of use or adjust the mark. |
| Third-party opposition | Someone opposed your application. | Respond to the opposition with arguments and evidence. |
The deadline: two months
The law gives two months to respond to what IMPI raises. If the term runs out without a response, the application is considered abandoned. Check the notification date carefully and don't leave it for the last week: a good response takes analysis, and for foreign applicants it often also takes time to gather instructions and evidence.
How to answer a citation of a prior mark
- Argue the phonetic, visual and conceptual differences between the marks as a whole, as a Spanish-speaking consumer would perceive them.
- Narrow the goods or services in your application so they no longer relate to those of the cited mark.
- A letter of consent from the owner of the earlier mark, where the law allows it and the relationship permits.
- Attack the cited mark: if it isn't used, request non-use cancellation; if it was wrongly registered, its invalidation.
What to do today
- Find the notification date and calculate the deadline.
- Download the full office action and the details of any cited mark.
- Get advice before the first month is over.
Frequently asked questions
How long do we have to respond to an IMPI office action?
Two months. If you don't respond within that period, the application is considered abandoned.
Does an office action mean the trademark was refused?
No. It's a requirement to clarify or argue. Many applications with office actions end up registered when they're answered well.
What is a cited prior mark?
A mark registered or applied for before yours that IMPI considers confusingly similar for related goods or services.
Our Madrid designation of Mexico got a provisional refusal. Is it the same?
Essentially yes: IMPI's objections are the same, but the response must be filed through local counsel in Mexico within the term stated in the notification.
Got an office action?
Send it to us with the notification date. We'll tell you how serious it is and how we'd answer it.
Send us the office action