Trademarks · Office actions
An office action is usually a question, not a verdict.
Many applications draw at least one office action, and many of them can be answered pretty easily. You’ll have three months from the day it issues to respond, so that clock might already be running for you.
If you read nothing else
- What it is
- A letter from the USPTO attorney examining your application. It tells you what they want fixed, or argued, before your mark moves forward.
- The deadline
- Three months from the date it issued, not the date you first saw it. You can buy one three-month extension from the USPTO, once.
- If you miss it
- The USPTO will abandon your application. If that happens, you can petition to revive it, but only within two months of the notice of abandonment (and for another USPTO fee).
- How common it is
- Common enough that I don’t immediately read one as bad news. In my experience, many applications draw at least one and many of those go on to register.
There are two kinds of office action
Administrative
The examiner just needs some paperwork fixed. These usually get resolved fairly easily, such as by:
Substantive
The examiner is objecting to the mark itself. These take evidence and an argument. Luckily enough, I write both! Some common reasons might include:
- Your mark is too similar to a mark already registered (also called a “likelihood of confusion”)
- Your mark describes the product or its features instead of coining one outright
- Other refusals, such as the mark being merely a surname or a place name
What happens when you send it to me
I read it, for free
Forward me the office action or your serial number. I’ll tell you (hopefully in plain English) what the examiner wants.
You get your options and a flat quote
I’ll then lay out what you can do and what each choice costs, in writing, before any work starts.
I write the response, and you approve it
You read my draft and sign off, and then I sign it and file it.
The examiner decides
If our response is persuasive, your application moves on toward publication. If it doesn’t, the examiner will issue another non-final or final office action, and I’ll walk you through your next move: a new response, a request for reconsideration, or an appeal to the Board.
Have the serial number? Check the record first.
What it costs
Initial review of the office action | Free |
|---|---|
Administrative response Disclaimer, identification amendment, specimen, and similar. One is included with each application we file at our current rates. | $300 |
Substantive response Descriptiveness and other merits refusals | $750 |
Likelihood-of-confusion response One cited registration; $500 for each additional cited registration | $1,500 |
Request for reconsideration after a final refusal The retainer is an advance deposit, held in trust and drawn down as time is billed | $500 retainer + $350 per hour |
Appeal to the Trademark Trial and Appeal Board $2,000 advance deposit, held in trust and drawn down as time is billed | $350 per hour |
Flat fees, except a request for reconsideration and a Board appeal, which are billed by the hour against an advance deposit. We quote in writing before we start working and itemize any USPTO fees separately.
This page is general information, not legal advice for your situation. Talk to us about yours.