Is there any other solution to an office action besides responding?

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Written by Tomas Orsula

Senior Trademark Attorney

Yes, if you receive a trademark office action from the USPTO, there are alternative options and solutions that you can consider.

The appropriate course of action depends on the specific circumstances of the application and the nature of the issues raised in the office action. Here are the most frequent alternatives to consider:

  • Abandonment and Re-filing: In some cases, if the applicant believes that the office action would be particularly hard to overcome, such as due to issues with descriptiveness or similarity to other marks, they may choose to abandon the current application and re-file a new one. If you choose this route, you can simply not respond to the office action, and the USPTO will consider your application abandoned. You can file your new application concurrently. However, you should be careful when considering this option, as it may involve additional costs and time. It will also result in the loss of your previously paid fees and the priority right for the mark.
  • Negotiation and Seeking Consent: If there are potential conflicts with existing trademarks, you can explore options for coexistence agreements or other arrangements with the owners of those trademarks. This may involve negotiations with the other party to address the USPTO's concerns.

The most appropriate solution will depend on your specific situation and goals. It's essential to carefully assess the issues raised in the office action, consider your options, and consult with a trademark attorney for expert guidance in making an informed decision.

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