Written by Igor Demcak
CEO & Legal Mind
Yes, you can still get a trademark after receiving an office action. Office actions are official notices from the IP office about the deficiencies of your mark. If you can resolve them, your registration process will resume.
It's worth pointing out that in jurisdictions with stricter examination practice, office actions happen quite often. For example, in the US, about half of all applications receive an office action.
While it's definitely possible to overcome an office action, your chances depend on the issues raised. Sometimes, all you'll have to do is correct simple administrative errors or simply comply with the examiner's suggestions (which they will provide in the office action itself). Other times, overcoming an office action requires submitting a response with strong legal arguments and supporting evidence.
If you received an office action and aren't sure how to understand its contents or what to do, you can seek the help of a trademark attorney. They will discuss your options with you and help you prepare a proper response.
If my trademark is rejected for being geographicaly misdescriptive, can I do anything?
How much does it cost to register a trademark by myself vs by an attorney or an online service?
If I register a figurative trademark, will the wording be registered as well?
Should I start by registering the trademark in one country and then add more, or do all at once?
Is it better to register the trademark in the UK, the US and the EU all at once?
I've just filed my trademark application; does this mean my trademark is registered?
If my logo includes text, is the text also protected by the trademark?
Our team of experienced trademark attorneys is here to help you! Simply send us an email outlining your request and we'll be happy to assist you.
