A USPTO Office Action is a letter from the examining attorney reviewing your trademark application. It explains why the mark can’t be registered as filed. Getting one is common and usually fixable, but the clock starts the day it’s issued. Braslow Legal helps applicants answer Office Actions. Below are eight steps to take in the first days after one arrives, followed by a short list of law firms serving the Altamonte Springs area.
What should you do first when an Office Action arrives?
Start by confirming the letter is real, then work out your deadline. Everything else depends on those two facts.
- Verify that it came from the USPTO. Private companies send official-looking solicitations that charge fees for “registration” or “monitoring.” The USPTO warns applicants about these. Genuine Office Actions come from a uspto.gov address, and you can confirm them by looking up your serial number in the USPTO’s Trademark Status and Document Retrieval (TSDR) system.
- Write down your response deadline. Applicants generally have three months from the issue date to respond. You can request one three-month extension for a $125 fee. If you miss the deadline, the USPTO treats the application as abandoned.
- Check whether the action is nonfinal or final. A nonfinal action is the examiner’s first round of objections, and you can respond with arguments, amendments, or evidence. A final action means the examiner wasn’t persuaded. Your options then narrow to a request for reconsideration, an appeal to the Trademark Trial and Appeal Board (TTAB), or both, filed within the response period.
How do you tell a refusal from a requirement?
A refusal is an objection to the mark itself. A requirement is a fix to the paperwork. Office Actions often contain both, and you must address every one.
- Sort each issue into one category or the other. Substantive refusals include likelihood of confusion under Section 2(d) of the Lanham Act and descriptiveness under Section 2(e)(1). Requirements include unclear descriptions of goods or services, unacceptable specimens, and requests for a disclaimer. A disclaimer is a statement that you don’t claim exclusive rights in a generic or descriptive word within the mark, such as “Coffee” in “Lakeside Coffee.”
- Clear the simple requirements first. Many identification problems can be fixed with wording from the USPTO’s Trademark ID Manual. You may narrow or clarify your goods and services, but you can’t broaden them beyond what you originally filed. For small issues, examining attorneys sometimes agree to an examiner’s amendment by phone or email, which can resolve the matter without a formal written response.
How do you overcome a substantive refusal?
You answer it with a combination of legal argument, evidence, and sometimes strategic amendments.
- Build your response around the specific grounds cited. For a likelihood-of-confusion refusal, you might show that the marks create different commercial impressions, that the goods travel through different trade channels, or that many similar marks already coexist on the register. Narrowing your goods or services, or getting a consent agreement from the owner of the cited registration, can also clear the conflict.
- File through the Trademark Electronic Application System. The USPTO requires responses to be filed electronically through TEAS. A response that skips any issue can be treated as incomplete, so check each item against the original letter before you submit.
- Plan for what comes next. If the application is abandoned because of an unintentionally missed deadline, a petition to revive must generally be filed within two months of the notice of abandonment. Applicants who live outside the United States must be represented by an attorney licensed in a U.S. jurisdiction.
Which law firms serve businesses near Altamonte Springs?
These five firms work with clients across the greater Altamonte Springs area:
- Braslow Legal
- The Elkins Law Firm, P.L.
- Korshak & Associates, P.A.
- Barrister Law Firm, P.A.
- Cornerstone Law Firm
1. Braslow Legal
Braslow Legal, led by Neil D. Braslow, Esq., practices intellectual property and business law for clients in Florida and New Jersey. The firm prepares responses to USPTO Office Actions, including arguments against likelihood-of-confusion refusals and fixes for identification and specimen requirements. Earlier in the process, it handles trademark clearance and application filing. After registration, it monitors trademark portfolios and enforces clients’ rights.
Its other practice areas include copyright, business formation, contracts, internet law, employment agreements, nonprofit compliance, and sports and entertainment law. Braslow Legal offers a complimentary 30-minute consultation.
2. The Elkins Law Firm, P.L.
The Elkins Law Firm is an Altamonte Springs law office that handles a variety of legal matters.
3. Korshak & Associates, P.A.
Korshak & Associates is a law firm with an office in Casselberry serving Central Florida clients.
4. Barrister Law Firm, P.A.
Barrister Law Firm is a Maitland practice representing individuals and businesses.
5. Cornerstone Law Firm
Cornerstone Law Firm is a Winter Springs law office serving clients throughout Seminole County.
Is an Office Action worth fighting?
In many cases, yes. Most Office Actions raise issues that can be resolved with a careful, complete response filed on time. The most costly mistakes are missing the deadline and leaving an issue unanswered. Mark your calendar the day the letter arrives, read every section, and get qualified help early enough to build a thorough response instead of a rushed one.
