Trademark Office Action Responses

An office action is an official letter sent by the United States Patent and Trademark Office. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before you can register your trademark.

In an office action, an examining attorney may require that you fix legal problems with the application itself (“requirements”) by making simple revisions, such as clarifying your goods or services. An examining attorney may also raise legal rejections (“refusals”), such as refusing your application because your chosen trademark is likely to be confused with an already registered trademark. 

Some office actions require a written response to fix major legal problems, others suggest calling or emailing the examining attorney to fix minor legal problems, and others may require no response at all. The office action will tell you what your options are and whether you need to respond. It is advised that you seek assistance from an experienced trademark attorney to prevent any other refusals or delays in your trademark application. Contact our office today if you’ve received an office action and need assistance.

Investment: starting at $850 USD depending on the complexity of the office action

(prices are subject to change without notice)

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Common Types of Office Action Refusals

  • Section 2(d) - Likelihood of Confusion

    • If your trademark filing bears resemblance to an existing registered trademark.

  • Section 2(e) - Descriptiveness

    • The mark is merely descriptive or deceptively misdescriptive of the product or service

    • The mark is primarily geographically descriptive or misdescriptive

    • The mark is primarily merely a surname

    • Includes a functional term describing the whole

Responding to Office Actions

  • During the initial consultation we determine if we will be able to assist you with responding to your office action.

  • After we onboard you as a Client we will then work on drafting the response and make sure we meet the response deadline.