Practice Overview: Trademark Office Action Response Service

If the USPTO Issues an Office Action for your Trademark Application, we can help. 

When the United States Patent and Trademark Office receives your trademark application, they must do a thorough examination of your proposed trademark. If the mark is barred from registration, or they need additional information, you will receive an Office Action. If this happens, you need an experienced trademark attorney to help represent you.

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Vern Francissen

Partner

Silicon Valley

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Have You Received an Office Action?

When you submit your application for a trademark registration to the USPTO, it goes through a process of checks to ensure it can be registered. One step your trademark goes through is review by an Examining Attorney, which is an attorney that works for the USPTO and ensures there are no legal barriers to registering your mark. Unfortunately, there are several bases that the USPTO can reject your mark. I’ve detailed many of them in this blog post.

Time Matters - You Only Have 6 Months to Respond

You only have six months from the date of your Office Action to respond. If you fail to respond, the USPTO will deem your application abandoned, and require additional fees to reapply or revive your application. Furthermore, the USPTO will not remind you of any deadlines, so the burden is on the applicant to respond in a timely manner.

You Must Respond to Keep Your Application Alive

When the Examining Attorney issues an Office Action, it puts the brakes on the processing of your trademark application until you respond. However, all Office Actions are different. Some Office Actions are a denial of your trademark application, while others are just requests for clarification of details or request an amendment. Whatever the case, we can review your Office Action, advise you of our thoughts on the best strategy moving forward, and draft a response to the Office Action.

Common Reasons for Office Actions

  • Amendment to a disclaimer request
  • Amendment of the identification of goods/services in an application
  • Amendment of acquired distinctiveness based solely on a claim of 5 years of use
  • Change/addition of an international class (+fees for any additional class(es))
  • Claims of other registrations or applications owned by the applicant
  • Submission of a substitute specimen
  • Amendment to allege use (additional USPTO filing fees apply)
  • Refusal on the basis of ornamentation
  • Request for a statement of Name of a living individual
  • Refusal on the basis of descriptiveness, genericness, mistake, misdescriptiveness, geographic significance, surname, or other substantive objections (excluding likelihood of confusion)

Likelihood of Confusion? We Can Help

One of the most challenging Office Actions to receive is a likelihood of confusion refusal to register. When this happens, we can help submit arguments to combat the USPTO attorney’s determination. We can help with asserting acquired distinctiveness claims, and providing appropriate arguments and evidence for registration. We can also assist with submitting arguments against proposed disclaimers by the USPTO.

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