USPTO Refusals
An Office Action is not a rejection. It is the examining attorney raising an issue that has to be answered, usually within three months. Answer it well and the application continues. Miss the deadline and the application is abandoned, along with the filing fee.
Office Action Response
Quoted upfront • agreed in writing before work begins
Office Actions are not interchangeable. Some raise a procedural point that takes an hour to correct. Others refuse the mark outright on grounds that require legal argument, evidence of acquired distinctiveness, or a survey of the marketplace. Quoting a single flat fee across that range would mean overcharging most clients to cover the hardest cases.
So we read the Office Action first, tell you what it will take, and quote it before any work begins. If the refusal cannot realistically be overcome, we will say so rather than bill you to find out.
Already registered through us? Office Action responses are included in our $1,500 trademark registration package at no additional charge. This page is for marks filed elsewhere.
Most fall into a handful of categories, and the category largely determines the difficulty.
The examiner believes your mark is too close to an existing registration for related goods or services. These are substantive refusals and the most demanding to overcome, often turning on how the marks differ and how distinct the markets are.
The mark is said to describe a feature or quality of the goods rather than identify their source. Responses may argue the mark is suggestive rather than descriptive, or show that it has acquired distinctiveness through use.
The evidence you submitted does not show the mark used in commerce the way the rules require. Often correctable with a proper specimen, provided acceptable use can be shown within the deadline.
The description of goods or services is too broad, too vague, or in the wrong class. Usually procedural, and usually resolved with an amendment — but the amendment cannot broaden what you originally filed.
The examiner asks you to disclaim exclusive rights to a generic or descriptive portion of the mark. Frequently straightforward, though worth understanding what you are giving up before agreeing.
Missing information, an unsigned declaration, an ownership or entity detail to clarify. Low difficulty, but still fatal to the application if the deadline passes unanswered.
Forward the Office Action and your serial number. We confirm your response deadline the same day where we can.
We read the refusal and the examiner’s record, assess what it will take, and quote a flat fee in writing.
Legal argument, evidence, and any amendments required, drafted to address what the examiner actually raised.
We file with the USPTO and track the application through to the examiner’s next action.
Most Office Actions carry a three-month deadline, with an extension available for a fee in many cases. The deadline is stated on the Office Action itself. If it passes without a response, the application is abandoned.
No. It means the examining attorney has raised an issue requiring a response. Many applications receive one and go on to register. What matters is whether the refusal is procedural or substantive, and how it is answered.
Because the work ranges from a short amendment to a substantive legal argument backed by evidence. We quote once we have read the specific Office Action, so you are not charged for complexity your matter does not have.
No, and we will tell you when we think yours cannot. Some likelihood-of-confusion refusals are unlikely to be resolved, and in those cases rebranding or filing a different mark is often the better use of your money.
Yes. We frequently take over applications filed by the owner or by a filing service. We review the full record first, since choices made in the original application often shape what the response can argue.
We will confirm your deadline, tell you what it will take, and quote it before any work begins.