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You spent time coming up with the perfect brand and submitted it to the U.S. Patent and Trademark Office (USPTO) for registration. After waiting for the USPTO to process your trademark application you receive a letter from them telling you not that your application was approved but instead that there was a problem. This can be disheartening, and many just give up, but our Trademark Office Action Evaluation can help.

Approximately 70% of new trademark filers, like yourself, see their trademark application rejected on the first attempt. The key is not to give up or simply answer the USPTO’s objection. Instead, work with a trained professional who understands the arcane legal issues around US trademark law, who will collaborate and brainstorm with you, and revise your trademark application in such a way as to significantly increase its chance of approval.

USPTO Trademark Office Action

A USPTO Trademark Office Action is simply a letter from the trademark examiner to the trademark applicant regarding the status of the trademark application. Approximately 70% of the time, the Trademark Office Action represents an objection or rejection to the trademark application, providing a legal basis for the objection, with a deadline for a response (almost always six months). The basis for objection or rejection can vary significantly, along with the complexity of the issues — for example, a Trademark Office Action could simply request verification that a portion of the requested trademark in the trademark application be disclaimed (i.e. the word “Hamburgers” in “Joe’s Delicious Eats and Hamburgers”), or it could say the requested trademark is similar to a previous trademark application which creates a “likelihood of confusion”.

What Does an Office Action Mean for my Application?

Some of the most common reasons the U.S. Patent and Trademark Office will send you an office action are:

  • Requirement for “Definite” Identification of Goods/Services
  • Requirement to “Disclaim” a Portion of Your Mark
  • “Likelihood of Confusion” Refusal
  • “Descriptiveness” Refusal
  • Specimen Refusal
  • Administrative Issues

No matter what the objection from the USPTO is, all can be potentially overcome depending on the issues and circumstances. The catch is, you only have one shot to avoid your trademark application from being canceled, so make it count!

Next Steps

Step 1: Have Your Trademark Office Action Evaluated

Understanding the problem with your trademark application and how to fix it can be a tough task to undertake yourself. That is why Law 4 Small Business developed the low-cost USPTO Trademark Office Action Evaluation service. For only $49 we will assess your trademark and your Office Action, and then provide you with our analysis along with best next steps to properly respond to the Office Action.

Please note that this service is for an Office Action evaluation only and does not include a formal response to the USPTO.

Step 2: Office Action Response

Once you have identified the appropriate Office Action Response from our Office Action Evaluation, it is time to move forward with the formal response. Our trademark attorneys will work with you to produce a well-reasoned and professional response to your Office Action that will carry a high probability of success.

Step 3: Submit the Response

Once L4SB finishes your Office Action Response, you will review and approve it. Then we notify the USPTO that trademark attorneys are representing you and we submit the response. Sit back and relax, response time by the USPTO is usually six months or more, but rest assured your response was created and submitted correctly by trademark professionals. Once we hear back from the USPTO we will contact you immediately.

The L4SB Difference

Getting an office action letter is not the end of the world. Now that you have a response from the USPTO, L4SB’s trademark professionals will help you evaluate the trademark office action and advise you on the best course of action. We can then help fine-tune your trademark, so you get the most value out of your trademark and boost its chances of approval. Trademark attorneys have a significantly higher approval rating than non-attorneys. Contact L4SB to find out why.

If you are considering not replying to the USPTO, please call us first for a free consultation. We’ll give you our quick thoughts on whether it makes sense to go forward or at least let you know what the issues, costs, and risks are.