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Don’t Panic! So You Received A

Trademark Office Action

From The United States Patent & Trademark Office (USPTO)

If you have received a USPTO Office Action we can draft and file a response on your behalf.

Need To File An Office Action Response?

Call today for your FREE no obligation consultation.

What Is A USPTO Office Action?

After you file a trademark application the United States Patent and Trademark Office (“USPTO”) may issue something called an Office Action. When an Office Action is issued on your trademark filing, this can be as serious as a refusal of your trademark application, or, simply a request to amend something in the application.

Why Did My Trademark Application Get Refused?

There are several reasons why your trademark application may be refused.

Typical Types Of Trademark Refusals Are:

  • Likelihood of confusion refusal
  • Merely descriptive refusal
  • Other substantive refusals (including ornamental; fails to function as a trademark; primarily geographically descriptive; surname refusals)
  • Office actions may also consist of non-substantive refusals and requests for additional information

Need Assistance with your Office Action Response?

Call (914) 723-0394

What Do I Do After Receiving A USPTO Office Action?

If you have received a USPTO refusal don’t panic. It may be possible to have the refusal withdrawn. Please contact us and give us the serial number of your trademark application. We will evaluate the refusal free of charge and give you an honest opinion as to whether we think there is a chance to persuade the USPTO examining attorney to withdraw the refusal.  There is no obligation and our evaluation and consultation is free of charge.

What Is An Office Action Response?

An office action response is your official legal response to an office action issued by the USPTO. Office actions can consist of a simple request for additional information to a lengthy argument supporting a refusal to register your trademark on any number of statutory grounds.

The Most Common Grounds For Trademark Registration Refusal

  1. Likelihood of confusion with a prior registered or applied-for mark
  2. Refusal based on assertion that the trademark is “merely descriptive”  (the trademark does not perform a source identifying function because it consists entirely of descriptive terms).

If you have received an office action please let us know. We’ll evaluate it and consult with you about a response. And in those situations where simply arguing against the USPTO Refusal does not seem like a promising strategy, we’ll go the extra mile to find a creative solution that works for you. Because sometimes the best response is to come up with an alternative solution.

It All Begins With A Free Initial Consultation

Call: (914) 723-0394

Thomas M. Wilentz, Attorney At Law, PPLC, is a New York Trademark Lawyer.

Thomas M. Wilentz is a graduate of Columbia Law School with honors (Harlan Fiske Stone Scholar). He is a member of the American Bar Association, the New York State Bar Association, the New York State Bar Association Intellectual Property Section, and a member in good standing of the bars of New York and New Jersey. Mr. Wilentz has assisted U.S. and international clients ranging from small companies to large multinational corporations in their applications for registration and other trademark matters.