Office Actions

Filed your trademark application yourself, but now the USPTO has issued an Office Action refusing to register your mark? Let tmalaw™ help you navigate the minefields to secure registration.

Schedule a Free 30-Min Consultation

Don't lose your investment. Let tmalaw™ trademark attorneys fight to overcome the USPTO's refusals and push your trademark to registration.

You've waited months for your trademark application to be assigned to an examiner. You've paid hundreds of dollars in non-refundable filing fees. Don't lose your investment because you're unsure how to respond to the Examining Attorney. Don't lose the benefit of the filing date of your application. Don't risk your application being abandoned and someone coming along and stealing your brand name from under you.

Don't Waste
Time & Money

You have spent a long 6 to 9 months already waiting for your application to finally make it to an examiner's desk. You've paid hundreds of dollars in nonrefundable filing fees (& maybe to an inexperienced attorney). If you don't file a proper legal response to your office action, your time and money is going down the drain.

Don't Lose the Filing Date of Your Application

The date you filed your trademark application is important - it is the date you establish nationwide priority over others who might use a brand name similar to yours. If your application is rejected, you'll have to start the application process all over again - with a brand new filing date.

Don't Lose Your
"First to File" Status

If two trademark applications have similar brand names, whoever was the first to file wins. In other words, if you aren't successful in responding to your Office Action, your application will be abandoned, someone else will file using your brand name, and prevent you from ever securing federal protection for that name.

tmalaw™ is experienced in responding to the USPTO and securing #smartresults for our clients.

Listen to how we successfully argued on
behalf of a merchandising brand
to overcome refusal to register his trademark.

about

Trezanay M. Atkins

When we talk about brands, we don't usually think about lawyers. But, Trezanay is trained in intellectual property rights management, brand negotiation, and litigation – and she built tmalaw specifically to serve brands in these areas.

Learn More

Office Action Response Packages

Designed to meet brands at whatever stage of growth they are in, tmalaw offers flat fee, honest pricing. We also offer payment arrangements.

Schedule your free 30-minute consultation so we can create a solution unique to your office action and that fits your budget.

Schedule Your Free 30-Min Consultation

FAQs

What is an Office Action?

How do I know an Office Action

is "non-substantive"?

How do I know an Office Action

is "substantive"?

What payment types are

accepted?

An office action is a formal legal response from the USPTO's examining attorney detailing the results of their legal examination of your application. They require a formal legal response to each of the issues raised.

Non-substantive Office Actions are letters issued by USPTO examining attorneys that do not necessarily refuse registration of the mark. They generally cover formalities that may be resolved quickly and inexpensively. For example, any of the following reasons may lead to a non-substantive Office Action:

proposed amendment to the identification or classification of goods/services
request for more information on the mark
proposed revision to the description of a stylized design mark
requested disclaimer of a portion of the trademark

Substantive Office Actions typically include a refusal to register the trademark based on certain grounds. They generally raise issues requiring more time and greater effort in response. For example, any of the following reasons may lead to a substantive Office Action:

likelihood of confusion refusal
mere descriptiveness refusal
disagreement with a disclaimer required by the examining attorney
ornamental refusal; failure to function refusal

We accept all major card issuers, including Mastercard, VISA and American Express. You can also checkout using PayPal.

Paying in installments

You can pay using ClientCredit (powered with Affirm), a long term financing option.

You can also make a payment plan directly with our office. It requires a deposit with the remaining balance due over three monthly installments. Terms and Conditions apply.

Legal Zoom, Trademarkia, Trademark Engine, Heirlume, Trademarks 411, and others cannot respond to an Office Action.

When you hire those companies, you are spending an entire $300-$600 dollars for them to only fill out your application (ridiculous!) but you will be left holding the bag when the examiner issues a legal response to the application because only a lawyer can respond to an examiner on your behalf. Those companies cannot help you because they. cannot. practice. law.

PS. Examiners issue a legal response to 94% of all trademark applications. So, the odds are definitely not in your favor.

PSS. Legal expenses for your business are tax-deductible because capitalism recognizes that you cannot build/scale/protect a legitimate business without competent legal counsel.

Let us save your trademark application.