Most trademark registration refusals can be addressed. The real question is whether yours should be.
Office actions vary. However, the deadline remains the same. If you miss the response deadline, the application will be abandoned. I respond to office actions for both my filed applications and those I did not file.
If This Sounds Familiar…
You filed your application yourself, then received a letter referencing sections of a statute you have never read. Perhaps a filing service submitted it for you, and now you’re facing an additional fee to respond. Alternatively, another attorney filed your application, and now the response deadline is approaching, and they don’t have a clear plan in place.
An office action is a communication from the examining attorney outlining the obstacles that prevent your trademark from being registered. These obstacles can include paperwork requirements, such as an amendment, a disclaimer, or clarification. Alternatively, it may involve a refusal where the examiner believes your mark is too similar to a registered mark or that it merely describes your products or services. Regardless of the reason, you have a limited timeframe to respond, typically three months for most applications, with one extension available for an additional fee.
What I Handle
Understanding the refusal. Before taking any steps, it is crucial to understand the nature of the refusal, whether it is procedural or substantive. This involves assessing what a response would require and providing my honest opinion on the likelihood of success. Some refusals require a response, while others are better ignored. I will advise you accordingly before you invest money in an argument.
Procedural responses. Procedural responses include actions like amending identification, filing disclaimers, substituting specimens, and fulfilling other requirements that focus more on correcting the record than on making an argument.
Substantive responses. Substantive responses involve addressing refusals based on likelihood of confusion or descriptiveness. These require a well-supported argument backed by evidence, precedents, and a coherent theory of the case, not just a standard form letter or an AI-generated response.
Common refusal types. Most office actions typically fall into a few common categories, including:
Likelihood of confusion with a registered mark
Merely descriptive refusals
Specimen issues
Surname refusals
Deceptively misdescriptive claims
Each type has its own response strategy, and our consultation will identify the issue you are facing.
Navigating the refusal. Sometimes the best approach is not to argue. Options may include amending the application, negotiating consent with the owner of the conflicting registration, or refiling with a stronger application. I have successfully negotiated coexistence from both perspectives and will guide you on the best path forward.
Deadline Management. I can help with deadline triage, including requesting extensions when time is short and exploring revival options if you have missed a deadline.
Understanding non-refusal letters. Not everything from the USPTO is a refusal. Suspension notices and notices of allowance deadlines can also be confusing. If you receive any correspondence that you don’t understand, our consultation will cover those as well.
How It Works
Intake process. Begin by submitting the intake form and attaching the office action letter. Please include the full letter, not just a summary, as it contains essential information.
Consultation. The consultation includes a comprehensive review of your office action before our call for $250. During the meeting, I will translate the letter into plain English, explain the deadline and the consequences of missing it, assess whether the refusal is worth responding to, and provide a flat-fee quote for the response. You’ll leave the consultation with a clear understanding of the situation, whether to respond, and what the associated costs are, regardless of your decision. The argument against the refusal is presented in the response once you engage me.
Drafting and filing. I will draft and file the response on your behalf, and you will have the opportunity to review it before submission.
Next steps. Following submission, you may receive acceptance and publication, a final refusal with options for appeal before the Trademark Trial and Appeal Board (the tribunal within the USPTO), or the possibility for further response. Each subsequent step will come with a clear fee quote before it begins. I will monitor the application through the client portal until the response is resolved, and each notice you receive will include an explanation, not just a forwarded message.
Fees
The consultation fee is $250, which will be credited toward the response if you decide to engage my services. The consultation fee is applied once toward a response to the same office action.
Procedural responses are charged at a flat rate of $500.
Substantive responses will be quoted during the consultation before any drafting begins. These typically range from $1,500 to $3,500, as handling a likelihood-of-confusion refusal differs from addressing a geographic descriptive refusal. If time is of the essence, I can file the extension request for $150 plus the $125 USPTO extension fee. Please note that negotiating consent or coexistence with the owner of a cited registration is considered a separate engagement.
USPTO fees are always billed separately. For clients whose registration applications I filed, procedural responses are included in your flat fee, while substantive refusals will be quoted separately, as outlined in your engagement letter. Trademark Registration [link]
What This Doesn’t Cover
Appeals. If the examiner issues a final refusal, appealing to the Trademark Trial and Appeal Board is a separate matter. It should be considered on its own merits.
Third-party disputes. If another brand files an opposition against your application, this is considered a dispute, not part of the examination process. Enforcement & Disputes [link]
A guaranteed outcome. The USPTO makes the final decision, and no attorney can promise the result. Instead, you will receive my honest assessment before you spend anything on a response, along with the strongest response supported by your facts.
Start Here
Complete the intake form and attach the office action. If the deadline is approaching, please indicate this in the form, and I will prioritize it accordingly.
FAQs
How long do I have to respond?
1
You have three months to respond to the office action issued by the USPTO for most applications, and you can request one paid extension. However, applications based on the Madrid Protocol follow a different timeline. Be sure to check the date on the first page of the letter. It’s the most important detail to review.
What happens if I miss the deadline?
2
The application will be abandoned. The USPTO does not extend deadlines due to unread emails, and refiled applications will incur new fees and lose their original place in line to those who filed after you. In certain situations, you can file a petition to revive an abandoned application, but this opportunity is also time-sensitive. So treat a missed deadline as urgent, not irreversible.
Can I respond on my own?
3
If you filed the application yourself, yes, you are legally allowed to. However, there are two important things to consider before doing so. First, everything you submit becomes part of the permanent public record of your trademark, and any mistakes can have serious consequences, both for this application and in the future when you try to enforce your trademark. Second, the response that seems obvious may not always be the best one. Consultations are designed to help you understand the type of letter you have received before you respond.
Is the refusal final?
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No. An office action is just a part of the examination process, not the conclusion. If your response does not convince the examiner, the USPTO will issue a final office action. Even then, you still have options, including the possibility to appeal to the Trademark Trial and Appeal Board, which is part of the USPTO. You’re currently at the stage where most refusals are addressed.
What is the cost of a response?
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The consultation fee is $250, which will be credited toward your total if you choose to engage my services. A procedural response costs a flat fee of $500. For substantive responses, I will provide a quote during the consultation; most range from $1,500 to $3,500. Please note that USPTO fees, if applicable, are billed separately.
Another attorney or filing service submitted my application. Can you take over from them?
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Yes, I can. I handle office actions for applications I didn't file, and taking over is standard procedure. I will become your attorney of record with the USPTO, and all correspondence will be directed to me. Please provide any documents that the original filer gave you. The USPTO’s records will help me fill in any missing information.
What’s the difference between a requirement and a refusal?
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The USPTO uses these terms, and you can find them in your correspondence. A requirement asks you to make corrections, such as amending the description, adding a disclaimer, or clarifying the application’s ownership. In contrast, a refusal presents an argument, stating that the mark is too similar to a registered one or that it merely describes the goods or services offered. The first type requires precision, while the second type requires justification. A consultation will help you understand which situation you are dealing with, as one letter often contains both elements.
The USPTO sent me an office action regarding my registration, not an application.
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While they may seem similar, they are distinctly different processes. Post-registration office actions, including audits of maintenance filings, are part of the maintenance and renewal work. If you’re unsure about which document you have, feel free to send it to me for clarification. My consultation covers either situation. Trademark Maintenance & Renewal [link]