What is a trademark Office Action?

When you apply to register a trademark with the USPTO, your trademark application will be assigned to a trademark examiner called an “examining attorney.” Unlike patent examiners, trademark examiners are all licensed attorneys at law. A trademark Office Action is a letter issued by the examining attorney reviewing your trademark application. Not all Office Actions are rejections. Some Office Actions raise minor issues or questions while others contain registration refusals that will require extensive arguments to overcome.

A proper response must address all issues in an Office Action to avoid abandonment of the trademark application.

Has your trademark application been rejected?

Receiving an Office Action does not necessarily mean that your trademark application has been rejected. You need to review the details of the letter to determine if you are dealing with a substantive or non-substantive Office Action.

Responses to non-substantive Office Actions are generally straightforward and simpler to prepare. As part of my firm’s trademark filing package, we provide non-substantive Office Action responses at minimal cost.

When is an Office Action response due?

A response must be filed by six months from the date of the Office Action. Unlike patent deadlines, this trademark Office Action deadline is not extendable.

Will an Office Action response require additional USPTO government fees?

Typically no, unless payment for additional classes of goods/services is required. If the examining attorney suggests a modified identification of goods/services that spans multiple classes, you may have to pay additional USPTO filing fees for each additional class that was not covered in your initial filing payment. Of course, you can also choose to delete certain goods or services to avoid additional classes, thereby avoiding additional government fees.

Can Office Actions be avoided or minimized?

Common rejections of trademark applications include likelihood of confusion over a prior trademark filing, and mere descriptiveness. A trademark knockout search by a competent trademark attorney can reduce the risks of a likelihood of confusion rejection. An experienced trademark attorney can also provide guidance as to whether a mark may be deemed merely descriptive of the contemplated goods or services.

For a quicker path to registration especially in a use-based application, an applicant should seek to avoid Office Actions by providing a comprehensive initial filing with goods and services that are properly identified and categorized in the right classes, and acceptable specimens of use. Doing so can shave months off the trademark application process and lead to a Notice of Allowance in less time.

How much does a trademark Office Action response cost?

My firm charges $295 for a simple response to a non-substantive Office Action. If a rejection is based on likelihood of confusion or mere descriptiveness, then a response with appropriate arguments will start at $1,800. Feel free to request a flat rate estimate for responding to your trademark Office Action.

When you consider the price of a trademark response, you should also consider the costs of any mistakes that might not be fixable in the future. Hiring an experienced trademark attorney may minimize future risks especially if a third party opposes your application.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com