RECEIVED AN OFFICE ACTION?
If the USPTO has sent you an Office Action, it means the Examining Attorney reviewing your trademark application has identified an issue — explained in a letter setting out the objections and what is required to address them. An Office Action is not a final rejection. Many objections can be overcome with a properly prepared response.
But the deadline is real. You must file a response within the period stated in the Office Action — currently three months for most applications, with a paid extension available. If no response is filed, the application is considered abandoned and your trademark will not be registered. Reviving an abandoned application, where possible at all, costs more than responding on time.
Technical and substantive objections
Office Actions generally raise two kinds of issues.
Technical objections involve clarifying or correcting information in the application — the identification of goods and services, the description of the mark, ownership, or the legal basis for filing. These are often resolvable, but the details matter: an amendment that fixes one problem can create another, and some errors (such as certain ownership issues) cannot be freely corrected after filing.
Substantive refusals challenge whether your mark can be registered at all. The most common are a likelihood of confusion with a previously filed application or registration, and a finding that the mark is merely descriptive of the goods or services. Overcoming a substantive refusal requires legal argument directed at the Examiner's specific reasoning — and an assessment of whether the refusal can be overcome, or whether a different strategy (such as amendment, a different filing, or the Supplemental Register) serves you better.
How we respond
We evaluate the Examiner's objections and advise you on your options before any work begins. Where a response makes sense, we prepare and file it. The Examiner then either withdraws the objection — allowing the application to proceed toward publication — or issues a Final Office Action, after which the remaining options include a request for reconsideration or an appeal to the Trademark Trial and Appeal Board.
Filed on your own?
Many of our clients first came to us after filing their own application and receiving an Office Action. Self-filing can work — but once the USPTO raises an objection, responding is where experience pays for itself. We regularly take over self-filed applications, assess what the Office Action actually requires, and get the application back on track. And where an application has problems a response can't fix, we tell you that before you spend money on it.
Send us your Office Action
The fastest way to know where you stand: send us the Office Action itself. We'll review it and tell you what it means, what a response involves, and what it will cost.
Contact us for more information.
Use the form below to contact us regarding an office action, TTAB proceeding, Cease & Desist or litigation matter. You may also email or call us to make an appointment.