Once your initial application for trademark registration is filed with the USPTO, it will be assigned to an Examining Attorney ("EA") who will carefully review your mark and compare it to others that have already been registered or are pending. The EA will also critically look at your mark to ensure it is eligible for registration. Issues that could cause concern include: a) the mark is confusingly similar to another mark, b) the mark is merely descriptive of the goods or services it is sold in, c) the specimens submitted are insufficient to show how the mark is being used in commerce, among other reasons.

In some cases, the examining attorney will identify an issue with a trademark application that requires a detailed legal-based argument as a defense to overcome a potential refusal. These are most commonly received when the examining attorney believes that the applicant's mark is similar and thus confusing to another mark already registered, or pending registration, merely describes the goods or services being sold, or is simply ornamental and not operating as a trademark identifying the source of the goods/services. Additionally, there are other reasons the examining attorney may raise questions that require a written response or defense before the examining attorney can move forward with the application. These are sent to the applicant in a substantive office action. These actions are substantive because they require more than a simple one- or two-line response. Instead, they require a comprehensive and persuasive legal argument to overcome the examining attorney's reasons for potentially refusing the mark. These responses, if needed, are not included in our base price. Pricing for this service is usually quoted at a fixed fee amount that is dependent on the complexity of the office action.

The actual document you receive from the USPTO can be quite overwhelming at first glance as it will be full of legal arguments, refusal text and case law. In reality, some office actions are fairly simple to resolve and more administrative in nature. These are called non-substantive office actions. Others are more complicated and are much more difficult to resolve. These are called substantive office actions and usually require the experience of a lawyer to make sound legal arguments and defenses while providing relevant evidence to overcome the EA's refusal. Office actions can be both challenging and confusing, but any refusals you receive can, in many cases, be overcome. If you received an office action, you have a limited time in which to submit your response to the USPTO. Contact The Law Offices of Michael Rada to learn how we can help respond to both substantive and non-substantive office actions on your mark's application.

You have three months from the date the office action was issued to respond. If you do not file a response with the USPTO on or before the due date, your trademark application will terminate and be marked abandoned. At this point, with some exceptions, your trademark application will no longer be eligible to be registered. For the most part, after this occurs, the only way to seek registration of that trademark is to start the process from the beginning. As mentioned, there are a few exceptions in that it may be possible to revive an application for a limited time after the office action due date if the failure to respond to the office action was unintentional. ​ You can learn more about this situation on the USPTO website by CLICKING HERE.(https://www.uspto.gov/trademarks/apply/abandoned-applications)

Yes! Don't delay if you have received an Office Action as there is only a limited time to file a response. Let us prepare and submit your response to a USPTO office action to give you the best chance of getting your trademark approved. • Non-Substantive Office Actions • Substantive Office Actions • All Pricing Fixed Fee ​​ Our Office Action Services Include the Following:​ • Carefully crafted response tailored to your individual trademark and office action. • Review of similar marks for office actions, approvals and denials by the USPTO. • Consultation with attorney to discuss your mark and the office action response. • We will file the office action response on your behalf. • We will keep you up to date on progress and status once the response is filed.

The answer to this question can only be answered on a case by case basis. By performing a comprehensive search before starting the application process, we can assess your application's risk, and thus the relative probability that your application will be met with a substantive office action. Please see the section above on comprehensive search for more information. ​