Have you Received an Office Action on your Trademark (Non-Final Office Action or Final Office Action)?

The response required depends on the reasons for rejection. We can let you know how to move forward.

YOU MUST RESPOND TO THE OFFICE ACTION WITHIN THE PERIOD PROVIDED OR YOU COULD RISK LOSING THE TRADEMARK.

Check Out Our 3 Office Action Response Packages,Addressing All Office Action Possibilities

Select the package that corresponds to your Office Action needs, based on the table provided.

If you have any questions, click on the “Ask a Trademark Specialist (non-Attorney)” at lower right (WhatsApp icon)

To get started, please complete the required information such as your mark serial number and as well as uploading additional supporting documents that may be required, for example if you need to provide a substitute specimen or there is any special meaning to your trademark. You will receive a confirmation email.

Once we have received your order, we'll reach out to let you know we are starting work on the response. Within a day or two we'll send you a response for you to review and make comments. Once you are satisfied, we submit the response electronically on your behalf and provide you with the filing receipt.

For rush orders (less than 5 days), we charge a $75 surcharge; please reach out in advance of selecting the package. If any additional USPTO fees are required, we will inform you and send you an invoice.

I Need an Extension of Time - What options do I have?

Most office actions give you three months to respond. Once you are past that deadline, you can still file a response in the late period (about 2.5 months after the deadline, 2 months after you receive the Notice of Abandonment) with additional official fees. You can also request an extension of time to respond if you are still within the first response period.


Click here if you missed your Office Action deadline but still want to respond to the office action. You can revive the application and provide the response, and keep your mark valid.

Extend the deadline
If you are still within the office action response time, you can extend the 3-month response period if you need time to think or to assemble evidence for a response for a fee. Click here for the “Office Action - Extend the Deadline Task” - cost is $49, plus official fee.

What types of Trademark Rejections are covered in each package?

Basic - What types of objections come under this package?

- Specimen of Use - Mark on Drawing Differs from Mark on Specimen - Specimen Unacceptable - Mark Differs on Drawing and Specimen - Sections 1 and 45 Refusal – Specimen Does Not Show Use - Amended Identification of Goods Required - Proper Classification of Goods - Required Identification and Classification of Goods and Services - Multiple-Class Application - Requirements Amended/Complete - Mark Description Required Amended/Complete Color Claim Required - Domicile Address Required - DOMICILE REQUIREMENT - Disclaimer Required - Disclaimer of Descriptive Wording Required - Disclaimer - REQUIREMENT DISCLAIMER - Attorney Requirement - Notice of Incomplete Response – Response Not Signed by Applicant’s Attorney - Trademark Counsel Suggested - Advisory: Applicant May Wish to Seek Trademark Counsel - U.S. Counsel Required - U.S. Licensed Attorney Required - U.S.-LICENSED ATTORNEY REQUIRED

Standard

- Likelihood of Confusion (2d) with another trademark - 2d Refusal - Section 2(d) Refusal Likelihood of - Confusion Section 2(d) Likelihood of - Confusion Refusal Advisory: Prior - Pending Applications - Advisory regarding Potential Section 2(d) Refusal - Prior-Filed Application - Descriptiveness or Genericness (2e) of the Trademark - 2e Descriptiveness Refusal SECTION - 2(e)(1) REFUSAL - MERELY DESCRIPTIVE - Section 2(e)(4) Refusal – Mark is Primarily Merely a Surname - Section 2(e)(2) Refusal – Primarily Geographically Descriptive - Potentially Deceptive & Information - Requirement Amend Identification to Avoid Deceptiveness

Premium

- Acquired Distinctiveness Advisory: Claim of Acquired Distinctiveness Under Trademark Act Section 2(f) - Acquired Distinctiveness Claim - Controlled Substances Act Refusal - Food, Drug, and Cosmetic Act Refusal