Trademark Office Action Responses By An Experienced Trademark Attorney

Lapin Law Firm can provide a review of the office action you received and help craft an intelligent and persuasive response.

We provide a thorough and honest review of the office action and will work with you to make sure we understand your goals for this matter, which we can help tailor our strategy to.

We will discuss your options with you, provide guidance on how to craft the response, and suggest which type of information may be helpful to include in the next office action.

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What Is A Trademark Office Action?

A trademark office action is a letter from the USPTO Office of Trademark examining and responding to an application for registration of a mark. A trademark office action generally includes one or more proposed rejections of the mark and may include other notices such as a notice that an applicant has not responded to an office action.

Trademark registration is granted if, after examining it for compliance with certain statutory requirements, the USPTO decides to publish a mark for opposition. The USPTO follows US trademark law and is very specific in what they expect.

The applicant has 30 days from receipt of this office action within which to reply and either call into question any aspect of the USPTO’s action or to submit the required fee for a further examination of the mark.

What Is A Trademark Office Action Response

The Federal Trademark application asks the applicant of changes made to an application, or that an amendment is required. Trademark Office Action Responses are notifications sent by Trademark examiners to applicants whose mark does not meet Trademark application requirements. Trademark Office Action Responses typically include rejections and allow the applicant to respond, or amend their Trademark application.

How To Respond To A Trademark Office Action

Trademark Office Action Responses are notifications sent by Trademark examiners to applicants whose mark does not meet Trademark application requirements. Trademark Office Action Responses typically include rejections and allow the applicant to respond, or amend their Trademark application.

• Respond with an inquiry about why your trademark was rejected.
• Try renaming your product or service- Be wary of traditional phrases that might be infringing on someone else’s Trademarks, if any arise in your search for keywords.

What Can Cause A Trademark Application To Be Denied?

Denials may happen if the applicant’s Trademark is geographically restricted as well as if the Trademark application does not use federally registered trademarks or it includes prohibited goods and services, such as those involving big tobacco. Other Trademark Office action responses can be issued if the Trademark office does not approve of its Trademarks’ format, such as symmetry and color. Trademark Office Action Responses can also be issued for Trademarks that are too similar to Trademarks previously approved.

Real live examiners review every USPTO application and work hard to achieve uniformity in all decisions. An examiner has the power to approve, deny, or indefinitely suspend a trademark application. The people who examine your trademark can reach differing conclusions with different opinions. A clearly written response to an office action can save you months of headaches in the long run.

If the trademark examiner determines that the trademark application doesn’t comply with legal paperwork, they will issue an office action. There are two main types of office actions; Procedural Trademark Office Actions and Substantive Trademark Office Actions.

Common reasons for denying a trademark include:

• Not having enough color contrast
• The word is too generic and lacks secondary meaning and intent to use.
• The mark is deceptive, derogatory or misleading.

What Are Common Procedural Trademark Office Actions?

Trademark office actions are responses or replies to an application for trademark registration. Trademark office action letters often come in the form of rejection, refusal, requirement notice, incomplete response notice, or an office action response that grants the application for registration.

Disclaimer

If a section of the trademark seems too generic or descriptive to serve as a trademark, the USPTO will not allow the application to proceed until that phrase has been cleared by “disclaiming” it. For example, a shoe shop owner with the prospective trademark LollyBest Shoes would need to disclaim the rights to the word, “Shoes” so the trademark application can continue.

Specimen Refusal

An applicant must provide evidence that the mark is actually being used in conjunction with the sale of designated goods to provide an appropriate specimen. If the specimen doesn’t show “Use in Commerce,” it will be rejected.

Class Refusal

When an applicant submits a trademark application, he/she must be clear about which goods/services the trademark is limited to. For example, a person who intends to sell T-shirts would use CL 025. In the case of a missed class, the USPTO will reject the application.

Multiple-Class Requirement

When an applicant is drafting his or her own description of the goods and services that trade under a trademark, he or she may inadvertently put in items that belong in more than one class. If the USPTO rejects your application, for this reason, they will require you to submit additional information in a different Class.

Legal Entity Errors

In the event that an application’s legal entity doesn’t match or correspond with the actual business entity, the USPTO will reject that trademark and send an Office Action.

I Received A USPTO Office Action, What Do I Do Next?

If you receive a USPTO Office Action, the next step is to respond in a timely manner. In response to your Office Action, please provide arguments and evidence that address each of the issues raised in the Office Action. Typically, you have three months to respond, starting on the date of receipt. You will need to provide arguments and evidence that address each of the issues raised in the Office Action. After this time period lapses, USPTO will proceed with the examination of your application and may refuse registration.

Hiring an experienced trademark attorney to handle your office action response can be a wise decision. You should also consider the need to hire an experienced trademark attorney for any follow-on correspondence with USPTO, as well as other tasks related to your registration application.

Your name is important. So you want to do your best with it! But, if someone else has already taken your name for their own product or service, then what? Your trademark attorney can help you navigate this tricky process.

How Much Will I Pay For Help Responding To A Trademark Office Action?

If you’re a small business, the trademark process can seem daunting and time-consuming. On average, it takes about four months to get through all of the necessary steps in order to register a trademark.

It will cost you a nominal fee to have one of our Trademark Attorneys-at-Law provide you with customized guidance and support as your trademark application moves through the process, and we’ll work with you to create a timeline that works for your business.

Can Lapin Law Firm Respond To My Office Action For Me?

Yes, Trademark Office Action Responses typically include rejections and allow the applicant to respond, or amend their Trademark application. Lapin Law Firm can help you navigate the trademark process to ensure you obtain the trademark most suited for your business. Trademark registration, Trademark Office Action Responses and Trademark Search are all services provided by our Trademark Attorneys-at-Law.

Get Your Trademark Application Back On Track With An Experienced Trademark Attorney

We know that trademark applications can be complicated and confusing. That is why we always recommend our clients seek the help of an experienced Trademark Attorney-at-Law to guide them through the process.

Lapin Law Firm is ready to help you navigate the trademark process. Contact us today for more information on Trademark Office Action Responses, Trademark Registration, and Experienced Trademark Attorneys-at-Law.