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  • Kiranjit Dharsan

What is an Office Action and and can I overcome it?

Updated: Nov 8, 2021

Within a few months after filing, your application will be assigned to an examining attorney on the USPTO staff. The examining attorney will review your trademark application, check whether it is complete, conduct a trademark search of the USPTO database to see if an identical or similar mark has been registered or applied for in the same class or related classes of goods and services and decide whether, in his or her opinion, the mark you have applied to register is registrable.

​If the examiner sees a problem, he or she will issue an office action, explaining why the examiner is refusing to register your mark, explaining the

issues(s), and what you may be able to do to address each issue. The office action normally provides a 6-month period in which to respond, but it is a good idea to assess the problem promptly upon receipt of the office action.

An office action does not mean that your trademark application is not going to register or that you should just let it go. It is merely a part of the trademark registration process, and some issues may be overcome rather easily, with the right advice, and inexpensively. Some of the simpler issues are a description of the mark, color claim, improper specimen, request for more information, translation request. If you face a slightly more complicated objection, for example, a confusion refusal or a descriptiveness refusal, then you would need professional help and advice.

Get in touch today!

We can help and assist you in preparing and filing a response to try to satisfy the examiner and overcome any objections. We shall connect you to one of our Trademark Attorneys, who will assess the nature of objections raised by the USPTO and provide you with a FREE preliminary assessment. Moreover, for responding to the office action, our Trademark Attorneys shall charge a fixed flat fee, rather than hourly rates. Act now and get your trademark registered with our help.

Click here to write to us or schedule a short call with one of our trademark attorneys. For small businesses and startups, we offer special consultation rates. Get in touch with us today!

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