If you have recieved a trademark Office Action issued by the United States Patent and Trademark Office, we can help you file a response at flat rate fees. An Office Action is an official document issued by an examining attorney of the USPTO rejecting a trademark application. If the trademark application has defects, the examiner issues an Office Action setting forth the basis for rejection. The applicant must file a response addressing all rejections.
Office Action – 6 months to file response
The applicant has a period of six months from the date of issuance to file an Office Action response. The response must address each basis for rejection set forth in the Office Action. If no response is received withn the six months period, the application will be abandoned (TMRP 2.65(a)). If the applicant files only an incomplete response, the examining attorney may issue a Final Office Action, making all outstanding requirements and refusals final.
You have been issued an Office Action, what to do next?
A trademark may be refused on a variety of grounds. In effect, the registration process of your trademark is brought to a halt, until a response is filed and you have complied with the examining attorney’s demands. The USPTO recommends hiring a private attorney specilized in trademark matters and so do we. There are many pitfalls before, during and after registration of your trademark and responding to an Office Action, may involve complicated issues that should be addressed by a professional trademark attorney.
Office Action Response must be filed by US attorney – foreign domiciled applicants
Recently, the USPTO has made it mandatory for foreign domiciled applicants, registrants and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, to appoint and be represented before the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States. If you have filed an International Registraiton (IR mark) that designates the United States, you may well be requested to appoint a licensed attorney.
We can help you filing a response to any Office Action. Irrespective of whether it is an administrative request, responding to a likelihood of confusion refusal (section 2(d)), or even appealing a denial of your application, we can help. Trademark Office Actions are not all the same. It is, therefore, necessary that we first review your applicant and the Office Action and determine what needs to be addressed in our response. Please submit your information in the form below and we will review your case.
US licensed attorney
Please note, that all submissions are made by a US attorney at law in good standing and admitted to practice before the United States Patent and Trademark Office in accordance with 37 C.F.R. §§ 11.1 and 11.14.
Flat Fees – USPTO Office Action Response
|Simple Office Action $150||Moderate Office Action $350||Complex Office Action $550||Likelihood of Confusion $700|
|- Agreement 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 Offical ffes apply)|
- Refusal on the basis of ornamentation
- Request for a statement of Name of a living individual
- Requests for information requiring limited research regarding the applicant's business
|- Refusal on the basis of descriptiveness, genericness, mistake, misdescriptiveness, geographic significance, surname, or other substantive objections (excluding likelihood of confusion)|
- Assertion of acquired distinctiveness with arguments/evidence
- Submission of arguments against a disclaimer request
|- One cited trademark $700
every additional cited trademark + $150