Office Action Responses

Obtaining a trademark registration is a huge accomplishment but the process to obtain a trademark registration is often 12 months+.

The trademark examiner (USPTO Attorney) has a responsibility to protect the trademark registrar. It’s not uncommon for a trademark examiner to issue an office action if they identify a problem with the trademark application that can refuse you registration.

An office action is an official notice sent from the United States Patent and Trademark Office examiner detailing the legal problems they have identified with your application. You must respond to the office action. Failure to timely respond to an office action will result in your trademark application becoming abandoned.

There are multiple type of office actions. Some office actions are simple, while other office actions can result in a refusal of registering your trademark.  See below

Substantial Office Action: Typically are more challenging than a non substantial office action. Substantial Office Actions require a detailed written response to overcome the legal problems the trademark examiner has identified.

The most common substantial office actions include but are not limited to: 2(d) Likelihood of confusion, 2 (e) Descriptiveness Refusal, Amendments, and Failure to Function.

Non- Substantial Office Action: Typically no substantial office actions are procedural and can be resolved without extensive arguments with the USPTO. It’s imperative to have an experienced attorney review the office action, as sometimes the requests of the examiners are not required to get your trademark application approved.

Non- Substantial Office includes but are not limited to: Disclaimer, Specimen Refusal, Class Refusal, Multiple Class Application, etc.

Response to office action: 

You must respond timely to an office action issued. Failure to respond will result in abandonment of your trademark. Most office action must be responded to within 6 months from the date issued. However, as of the time of writing the USPTO has proposed to change the timeframe to 3 months to respond to office actions.

You may purchase your office action service directly from our website or if you have any questions or concerns about your particular office action please contact one of our experienced trademark attorneys. We are always happy to provide an office action legal consultation.

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