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Trademark Office Actions

What is a Trademark Office Action?

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 be sure that it is, indeed, eligible for registration. Examples of issues that could cause concern are 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 or for several other reasons. 

Substantive vs. Non-Substantive Office Actions - What's the Difference?

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.

What if I don't respond to an office action?

You have six 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 essentially 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

We Can Help With Office Actions!

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.

OUR PHILOSOPHY

A sensible, practical and cost-effective approach to the practice of trademark law ensuring our clients are fully informed and understand their options every step of the way. Serving clients in all types and sizes of business providing experienced trademark services including trademark search, trademark registration, USPTO office action responses and trademark consultation.

Get in Touch!


Mailing Address:

840 S. Northwest Hwy
Barrington, IL 60010
(224) 655-5200
(224) 789-3203 (fax)

Meeting times by appointment only.