Response to Office Action

Response to Office Action

Pricing Table

pricing plan

We offer 3 plans for drafting an office action response, depending on the complexity

Basic Plan

I only need what it takes to file

$499

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  • Disclaimer issues
  • Specimen refusal/submission of substitute specimen
  • Request for information/clarifying ownership details
  • U.S. Trademark Attorney works on your response.

Standard Plan

I want to register & enforce my trademark

$799

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  • Issues with descriptions or classifications
  • Amendment to identification of goods and services
  • Requests for information regarding limited research on customer’s business
  • U.S. Trademark Attorney works on your response.

Advanced Plan

I want trademark mastery package: 100% approval & comprehensive support

$1299

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  • Likelihood of confusion
  • Refusal based on Descriptiveness and genericness
  • Primarily geographically descriptive
  • Representing a flag/living person/famous personality/surname
  • U.S. Trademark Attorney works on your response.

How to Respond to a USPTO Office Action

In order to reply to a trademark office action, it is obligatory to send in a formal response through the Trademark Electronic Application System (TEAS). The TEAS Response to Office Action form gives you the opportunity to tackle the problems that have been brought up, such as changing application details, providing a new specimen, or offering legal arguments. An example of a USPTO response to office action can assist you in organizing your answer efficiently.

The creation process has to be completed no later than three months from the date of issue as specified in the letter. In the absence of an answer within that four-month interval, you shall forfeit your right to a European patent.

General Response Steps

Acknowledge the Deadline:
The very first thing is to take note of the response deadline that has been specified in the office action. Failing to adhere to it will lead to abandonment.

File Through TEAS:
Employ the TEAS Response to Office Action form for non-final actions. In the case of a Final Office Action, the applicant has the option of filing a TEAS Request for Reconsideration or an appeal to the Trademark Trial and Appeal Board (TTAB).

Address Every Issue:
The content of your reply should encompass a detailed discussion of each objection expressed by the examining attorney.

Communicate with the Examiner:
In case of simple issues, you may contact the examiner through email or phone to informally discuss and fix the problems via an examiner’s amendment.

Additionally, you can perform a USPTO Office Action search to see the approaches taken in other cases regarding similar issues.

Common Issues and Sample Responses

Incorrect Information:
Remove any mistakes in the name, address or description of the goods and services of the applicant.

Insufficient Specimen:
New specimen should be submitted that shows clearly the trademark’s use in commerce.

Likelihood of Confusion:
Use a sample response to Office Action likelihood of confusion as a guide to develop your strong argument distinguishing your mark from others.

When to Seek Legal Counsel

The process of creation must be finished at the most three months from the date that the issue letter indicated. In case you do not respond within the specified time, it will be assumed that your application was not submitted.

Complex issues:
Attorneys hired can create the first-class responses using USPTO response forms made especially for your case.

Foreign applicants:
Non U.S. companies must employ a U.S. licensed attorney for their response submission.

Uncertain strategy:
A lawyer can evaluate your Response to Non Final Office Action USPTO that has been entered and forwarded to the examiner, thus making sure your response is legally sound.