You received an Office Action

An Office Action is the examining attorney raising an issue with your application. It is a normal part of the process, not a rejection of your business — and a great many registered marks received one on the way through.

What it is not is optional. The letter carries a deadline, and an application that goes unanswered past it is abandoned. If you do nothing else after reading this, find the response date on your letter and put it somewhere you will see it.

We take these on from anywhere

You do not need to have filed with us. The firm regularly responds to Office Actions on applications filed by the applicant themselves, and on applications filed by other attorneys. Self-filing and then getting stuck is common and not something to be embarrassed about — the forms are deceptively simple.

Unlike a straightforward filing, this work is billed hourly rather than as a flat fee, because how much work it takes depends entirely on what was raised and what the record already says.

What tends to be raised

• Likelihood of confusion with a mark already on the register. The most common refusal, and the one most often argued successfully.
• Merely descriptive. The mark describes the goods rather than distinguishing them. Sometimes answerable, sometimes a reason to reconsider the name.
• Specimen problems. What was submitted does not show the mark used the way the rules require. Frequently fixable.
• The identification of goods and services being too broad, too vague, or in the wrong class.
• Disclaimer requirements, where part of the mark has to be given up as generic.

What a response involves

It depends on what was raised. A specimen objection may need little more than the right evidence. A confusion refusal is a legal argument — comparing the marks and the goods, and setting out why customers would not be confused.

Part of the job is also telling you when a response is not worth filing. If the refusal is sound and the mark is weak, the better advice is sometimes to change course early rather than spend money arguing an argument that will not land.

Response periods and extension options are set by the trademark office and have changed in recent years. Rely on the date stated in your own letter, not on any general description.

If the deadline is close

Call rather than email. The office number is at the top of this page and a time-sensitive deadline is a good reason to use it.

Send us your Office Action

This page is legal information, not legal advice, and does not create an attorney–client relationship.