Office Action Response
Don’t Panic. Office Actions Can Be Overcome.
Receiving a USPTO Office Action doesn’t mean your application is dead. It means the clock is ticking. With the right response, you might be able to successfully overcome the Office Action
WHAT IS AN OFFICE ACTION?
The USPTO Rejected Your Application. Now What?
After you file a trademark application, an Examining Attorney at the USPTO reviews it. If they have objections, whether legal or procedural, they issue an Office Action explaining why your application hasn’t been approved.
This is extremely common. Receiving an Office Action doesn’t mean your mark can’t be registered. It means you need to respond clearly, persuasively, and on time.
The response needs to address every issue raised by the Examining Attorney and include relevant legal arguments, evidence, and case law where applicable. Getting it right matters.
Issued when objections are raised for the first time. You have 3 months to respond, extendable to 6. A well-crafted and thorough response can overcome the refusal and get your application back on track.
Issued if your initial response was unsuccessful. Your options are more limited, but you can still file a Request for Reconsideration and/or an appeal to the Trademark Trial and Appeal Board (TTAB).
Common Types of Office Actions
The most common refusal. The Examining Attorney believes your mark is too similar to an existing registered mark in the same or related class of goods or services. Overcoming this requires a detailed analysis of the DuPont factors, including the similarity of the marks and the relatedness of the goods or services.
Your mark is considered too descriptive of the goods or services it represents. To overcome this you must argue the mark is inherently distinctive, or provide evidence that it has acquired distinctiveness through continuous and exclusive use in commerce.
Common with apparel and merchandise applications. The Examining Attorney believes your mark is merely decorative and doesn't function as a source identifier. You may overcome this by submitting a different specimen or arguing secondary source significance.
Not all Office Actions are substantive. Many are procedural, requiring clarification of goods and services, a disclaimer of descriptive terms, or an updated specimen. These are typically simpler to resolve but still require a timely and accurate response.
HOW CAN I HELP
The Response Process
I'll review your Office Action and your application and give you a clear explanation of what the Examining Attorney is objecting to, what your options are, and what the best path forward looks like.
Every Office Action is different. I'll identify the strongest legal arguments available, gather the supporting evidence needed, and craft a response designed to persuade, not just respond.
I'll prepare and file a comprehensive response with the USPTO addressing the Examining Attorney's concerns. You'll know exactly what was submitted and I will keep you informed of any updates.
COMMON QUESTIONS
Office Action FAQ
What is an Office Action?
An Office Action is issued by the USPTO to let you know that your application has not been approved for registration. If an issue is being raised for the first time, this Office Action is considered “non-final.” If you have already submitted a response to an initial Office Action, but were unsuccessful in persuading the Examining Attorney to approve your application, a “final” Office Action is typically issued. At that point, the only way to respond to that is by filing a trademark appeal or a Request for Reconsideration with the Trademark Trial and Appeal Board.
Office Actions can be substantive or non-substantive in nature. Substantive office actions are issued when the Examining Attorney does not think your application should be approved based on legal grounds. A common example here includes a refusal based on a likelihood of confusion with another previously applied for (or registered) trademark. Another common issue that comes up is that the Examining Attorney thinks your trademark is merely descriptive and not entitled to trademark protection. Regardless of the issue, a substantive office action requires you to present a detailed legal argument stating why your mark should be allowed to register.
Non-substantive office actions are typically much simpler to address. They come up when you need to provide some additional information on your application or for clarification purposes. For example, a disclaimer may be required disclaiming descriptive terms in your mark. There may have also been issues with the information provided that need to be addressed. Before actually issuing an Office Action for simpler items, an Examining Attorney may contact you to try and resolve procedural issues directly. If you and the Examining Attorney come to an agreement regarding the discussed upon issues, he or she will issue an Examiner’s Amendment as confirmation to your discussion and make the necessary changes to your application.
How long do I have to respond to an Office Action?
You typically have 3 months from the “Issue Date” found at the top of the document to file a formal response. If you need more time, you can file a 3 month extension for a fee, but a response must be made within 6 months of the issue date.
What happens if I don't respond?
If you fail to file a response or an extension request by the deadline, your application is considered abandoned.
How much does it cost to respond to an Office Action?
I utilize a flat-fee business model for Office Action responses.
How Quotes Are Determined
Because every Office Action is unique, the cost depends on the complexity of the arguments and the evidence required to overcome the USPTO’s objections:
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Non-Substantive / Procedural: Issues like simple disclaimers, specimen updates, or clarifying the identification of goods/services are typically on the lower end of the fee scale and included if I filed your trademark application
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Substantive Refusals: These are complex legal arguments, such as for overcoming a Likelihood of Confusion or Mere Descriptiveness refusal, and require extensive research and the drafting of a formal argument, which reflects a higher flat fee.
I offer a free initial review of your Office Action and provide you with a quote based on the issues you need to overcome in your response.
TIME IS TICKING
Let’s Review Your Office Action.
Please share your details and your trademark serial number below. I’ll review your Office Action and get back to you within one business day with a clear assessment and flat-fee quote.