Trademark Office Action Response

An Office action is issued to your trademark application when the examining attorney lists any legal problems with your chosen trademark, as well as with the application itself.

How we can help you get your application on track?

Assign a US licensed attorney to your trademark application
Respond to any Office actions issued to your application
Monitor your trademark application so you don't miss any deadlines

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Please note that only the US licensed attorney assigned to your trademark application can provide legal advice to you in regards to your trademark application. See FAQs for more information.

Excellent service! I’ve used Trademark Classic twice now and they’ve always been great.

How it Works?

Once a United States federal trademark application is filed, it reaches an examining attorney about three to four months after the initial filing date. From there, the USPTO examining attorney will determine whether or not the application meets all of the requirements necessary for a registration. If it does not, the examining attorney will issue an Office action.

Our Process

To resolve the issue, we recommend you to let us assign a U.S. licensed attorney to your trademark application.

Get your Office action response in 3 simple steps:

Have an attorney appointed to your application
Attorney drafts a response to the office action
You review the response and approve the filing

Once approved, your mark matures to registration or is approved for a Notice of Allowance.

Received an Office Action? Have an attorney draft a response.

Most trademark applications receive an Office Action. Applications prepared by an attorney receive fewer Office actions. Since they have been dealing with trademark applications for years, they know how to avoid common trademark mistakes and can help you avoid getting Office Actions.

You have limited number of responses to contest an Office Action, so you need to be absolutely sure that the response is accurate and complete.

9 out of 10 people get it wrong the first time. Why waste time, money and chances when you can sit back and relax, while we draft a winning office action response for you.

Office Action Responses

Attorney Assignment Have an attorney assigned to your application.

Draft Response Have the assigned attorney draft a response.

Review and Sign You will sign the response and then we file it.

It's that simple!

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See what our customers think about us

It was a great experience working with Trademark Classic. Chris & his team are very helpful and professional.

Jill Smith

I was very confused on how I can protect my brand identity but thankfully I was able to find Trademark classic. They went ahead and did the entire thing for me in a very reasonable price.

Kevin Stern

Harvey helped me with my trademark monitoring and maintenance. I’d love to work with Trademark Classic again.

Bruce J.

Ryan made my day. I was waiting for the serial number for my trademark and the system kept my application on the same status for days without pushing it forward. In a matter few hours, he resolved the issue and brought me to satisfaction.

Andrea Switzer

Trademark Classic is great. Figured my questions out alot quicker than the other 5 companies I called with the same problem. Thanks for getting it solved quickly!!

Bria Gomez

This company has helped me tremendously. I would definitely like to work with them again.

Michael Turner Jr.

Everything was prompt and well done. There was no difficulty getting my concerns heard and attended to.

Joe Howard

Excellent and patient customer service. They took the time and care to address my concerns and calm my fears of filing incorrectly. I greatly appreciate it and feel confident about the filing process! Thankyou.

Sara Khan

Very good customer service. All staff I have spoken to since I started my quest getting my trademark...have been professional, courteous, helpful & patient.

Joseph Z

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USPTO Office Action Response FAQs

Still have a question? We’d love to help! Call us or Chat with one of our experts now.

What is a Trademark Office Action?

The USPTO issues an Office Action when they find a problem with a trademark application. An Office Action gives legal reasons why the USPTO has chosen to refuse trademark registration.

However, trademark applicants have an opportunity to respond and challenge the refusal.
When does the USPTO issue Trademark Office Actions?

The USPTO issues Office Actions during the examination. During the examination part of the trademark registration process, the USPTO examiner seeks out defects in a trademark application. If the examiner finds irregularities, the examiner issues an Office Action stating the defects.
What are the reasons for getting a Trademark Office Action?

The USPTO issues Office Actions when a trademark application does not comply with the law.

Sometimes a minor deviation causes an Office Action; other Office Actions arise because of significant issues with a trademark application.
Common reasons for getting a Trademark Office Action:

Likelihood of confusion: When the USPTO determines that two trademarks would cause confusion with one another, they issue a “likelihood of confusion” refusal. Applicants may respond by making appropriate legal arguments contending that the two trademarks are not so similar as to be confusing.

Descriptiveness: If a trademark describes the goods or services that it represents, it is descriptive. The USPTO will refuse to register a descriptive trademark on the Principal Trademark Register but may register the mark on the Supplemental Trademark Register.

Merely ornamental: If you use the trademark as a decoration and not as a brand, the USPTO deems such use as “merely ornamental.” The USPTO refuses to register merely ornamental trademarks.

Specimen Refusal: If a trademark specimen does not show proper trademark usage, the application gets refused. To solve this problem, submit a trademark specimen that shows adequate usage of the trademark.

Surname Refusal: The USPTO might take issue if the proposed trademark is mainly a last name. This is called a “surname refusal.”

Disclaimer: If a trademark contains a common word, such as “incorporated” or “studios,” the USPTO will want the applicant to disclaim that word. Disclaiming the word means that the applicant does not assert rights to that particular word. However, this decision must be considered carefully.

Class Refusal: If you file your trademark application in the wrong trademark class (or your application requires additional trademark classes), you will need to fi that.

There are many more reasons that the USPTO issues trademark Office Actions, but this list shows the most common causes.
How do I respond to a Trademark Office Action?

To respond to an Office Action, you file a form on the USPTO website. This form allows you to choose how you wish to reply.

While this form may seem simple, do not be deceived. Since you have a limited number of chances to contest the Office Action you either need to be 100% sure that you are responding correctly (and completely) or you need to secure the services of a professional trademark agency who can complete the process.
What happens if I fail to respond to a Trademark Office Action?

Generally, you have six months to reply to a trademark Office Action. If you fail to respond, you risk abandoning your application. If you abandon your application, you will have to start the trademark registration process over again.

Note that for some Office Actions, you might need to fix an underlying issue with your trademark application. Since that can take time, do not wait until the last minute. Start the response early to improve your chances of success.
How much does it cost to respond to a Trademark Office Action?

Depending on the complexity, costs vary. As with other trademark costs, a lot depends upon how you approach the issue. For more straightforward Office Actions, the cost to draft and submit an office action response will only be a few hundred dollars. For more difficult Office Actions, it could be thousands.
How many types of Trademark Office Actions are there?

There are two kinds of trademark Office actions:

Non-final Office Action: If an issue is being raised for the first time, the U.S. Trademark Office will issue a non-final Office action. The Office action explains the problems with the application and gives the applicant an opportunity to address or correct them.

Final Office Action: If the applicant has failed to overcome the issues raised in a previous Office Action, the USPTO will issue a final Office action. You have more limited rights to respond to final Office action
Are you a law firm?

No, we are not a law firm and do not offer legal advice. However, our professional team of trademark registration experts have helped over 50,000+ business owners register their trademark. They know the ins and outs of trademark registration and know exactly how to maximize your chances of getting your trademark registered.
Do you provide all kinds of Trademark Office Action responses?

No, since we are not a legal firm, we will first assess your case and guide you on the next steps. We will evaluate the eligibility of your Trademark Office Action and decide if we can work together or you require an attorney.
Why should I choose you if I can just hire an attorney who can file all kinds of Trademark Office Actions?

Not every objection in the Trademark Office Action requires a legal response. Most objections require the applicant to make fairly simple amendments to the application and typically involves things like fixing incorrect information about the applicant (perhaps the company is an LLC even though the application is listed as a corporation) and/or “disclaiming” the rights to one of the words in the trademark.

Our team of trademark registration experts have over 10+ years of experience in filing trademarks for clients from different industries.

While a lawyer may charge you a hefty fee depending on the number of hours they worked on your case; with us, you won’t be charged by the hour.

We offer a flat fee for our services, which is only a fraction of the fee you’ll end up paying a trademark attorney for the exact same service.

Let’s Get Your Trademark Registered!

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