Trademark Office Action: What a Successful Refusal Argument Looks Like

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.

Need to respond to a trademark Office Action? Call Vic at (949) 223-9623 or email to explore how we can help you get your trademark registered.

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

Has your trademark application been rejected?

An Office Action does not necessarily mean that your trademark application has been rejected. Pay close attention to the details of the letter to determine if you are dealing with a substantive or non-substantive Office Action.

A non-substantive Office Action generally requires a simpler response. As part of my firm’s trademark filing package, we provide non-substantive Office Action responses at minimal cost.

If your Office Action contains substantive refusals, consider having an experienced trademark attorney draft a more persuasive response.

When is an Office Action response due?

A response or an extension of time must be filed by three months from the date of the Office Action. If you need more time, you must file a trademark extension request by the 3-month extension-free deadline.

Will an Office Action response require additional USPTO government fees?

Unless payment is required for additional classes of goods or services, most Office Actions will not require further USPTO fees. 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?

The most common rejections include likelihood of confusion and mere descriptiveness. Likelihood of confusion means that the trademark examining attorney thinks your trademark is too similar to a registered trademark. A trademark knockout search by a competent trademark attorney can reduce the risks of a likelihood of confusion rejection.

A merely descriptive mark means that the USPTO examing attorney thinks your mark describes a characteristic of the covered goods or services. 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.

Spend More to Win or Spend Less to Lose: How much does a trademark Office Action response cost?

Our flat rate for a simple response to a non-substantive Office Action starts at $350.

If a rejection is based on likelihood of confusion or mere descriptiveness, then a response with appropriate arguments will start at $2,500. Keep in mind that the goal is to persuade an examining attorney who might be initially biased against registering your trademark. They process thousands of trademark applications. Your arguments need to be convincing, and making convincing arguments takes time and effort.

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.

Feel free to request a flat rate estimate for responding to your trademark Office Action.

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