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J.J. Lee, Trademark Attorney

⛔What is a Trademark Office Action and How to Handle It?

Published about 1 month ago • 1 min read

October 21, 2024

Hello Reader,

I hope you’re doing well! I wanted to take a moment to explain something that sometimes surprises trademark applicants—the Trademark Office Action. If you’ve received one, don’t worry—it's just part of the process.

What exactly is a Trademark Office Action?​
An Office Action is a letter from the USPTO outlining issues with your trademark application. It could be something minor, like clarifying details, or more significant, such as a potential conflict with another trademark. Essentially, it’s the examiner’s way of letting us know what needs to be addressed before your mark can move forward.

There are two main types of Office Actions:

  1. Non-Substantive (Administrative) – This is usually easier to handle and involves fixing small details, like descriptions or classifications. Once we correct it, we can move forward.
  2. Substantive – This type of Office Action can involve more complex issues, such as the likelihood of confusion with another trademark or concerns about the mark being too descriptive. In some cases, these issues can be resolved with a well-crafted response, but there are situations where the chance of overcoming the refusal is low, or the application may not have been properly prepared. If that’s the case, it may be better to abandon the application and explore filing a new trademark that stands a stronger chance.

What happens next?​
The response time for most U.S. trademark applications has changed. You now have 3 months to respond. If you need more time, we can request an additional 3-month extension, but that comes with an extra fee.

Rest assured, we’ll help you navigate this and ensure your application stays on track. If you’d like to go over the details of your Office Action or have any questions, feel free to reach out—we’re here to make the process as smooth and stress-free as possible.

Keep Your Brand Safe and Protected,​
​

J.J. Lee and the Trademark Lawyer Law Firm Team!

PS. Contact us to mark sure your business is protected!

J.J. Lee, Trademark Attorney

Protecting your Brand and Trademark Since 2007 and over 7,000 Trademark Registrations.

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