Is it hard to overcome a substantive office action?

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Written by Tomas Orsula

Senior Trademark Attorney

In general, overcoming a substantive trademark office action is harder than a non-substantive one since the reason for its issuing concerns the mark itself. However, the actual difficulty depends on the nature and severity of the issue(s) raised. While sometimes, you'll have to amend your application or your mark to comply with the examiner's requirements, other times, you might be required to submit legal arguments and supporting evidence to address their concerns.

It's, therefore, highly advisable to seek the guidance of a trademark attorney who can go through the contents of the office action, explain your chances of overcoming it and help you carry out the necessary steps to save your trademark.

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