WHAT IS A SUBSTANTIVE OFFICE ACTION?
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. In most cases, the price for this service starts at about $800.