I have received an office action from the USPTO. What should I do?

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Written by Tomas Orsula

Senior Trademark Attorney

Receiving an office action from the USPTO is a common part of the trademark application process. Here are the general steps you should take in response to an office action:

First off, carefully carefully read the office action to understand the reasons for the refusal or objections raised by the examining attorney. The office action will typically include reasons for dismissal as well as the examiner's suggestions to remedy them.

Next, understand the options. The USPTO provides several options for responding to a trademark office action:

  • Amend your application: You can amend your trademark application to address the examining attorney's concerns. This may involve making changes to the description of goods/services, disclaiming certain terms, or clarifying the identification of your goods/services.
  • Provide legal arguments and evidence: You can provide legal arguments and evidence to support the registrability of your trademark. This might include demonstrating that your trademark has acquired distinctiveness through use or providing additional evidence to overcome refusals.
  • Request an interview: You can request an interview with the USPTO examining attorney to discuss the issues raised in the office action. This can be an opportunity to clarify misunderstandings and work toward a resolution.

Pay close attention to the response deadline provided in the office action. Failing to respond on time may result in the abandonment of your trademark application. If there are any additional fees associated with your response, make sure to pay them promptly to avoid any issues.

If you're uncertain about how to proceed or if the issues raised in the office action are complex, it's strongly recommended that you seek assistance from a qualified trademark attorney. They can help you understand the contents of the office action, choose the best course of action, and prepare and submit the response on your behalf.

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