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What is a Trademark Office Action?

Posted by Michael Rada | Aug 05, 2021 | 0 Comments

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. 

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. As a first step, set up a free consultation with 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.

About the Author

Michael Rada

​Michael Rada is the owner-attorney of the Law Offices of Michael Rada, LLC located in Barrington, Illinois. He is admitted to the practice of law in the State of Illinois. Michael also can practice trademark law in all 50 states as trademarks are covered by federal law. ​Michael's practice is f...

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