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Office Action

Providing Legal Guidance to Orange County, CA, Clients Facing Trademark Office Actions

Are you attempting to register your trademark with the United States Patent and Trademark Office (USPTO)? Unfortunately, not every trademark application process goes smoothly. In some cases, the USPTO will issue office actions in response to a   some of which potentially jeopardize the trademark’s eligibility for registration.

While you technically don’t need an attorney to respond to an office action during the trademark application process, it is a good idea to have an Orange County trademark office action attorney on your side if you encounter any issues with your trademark application. The process is more involved than most people realize, and receiving a notice that the USPTO has issued an office action against your registration application can be stressful. The Kinder Law Group has the expertise to provide comprehensive legal counsel to trademark owners facing USPTO office actions, both substantive and non-substantive.

Why Choose The Kinder Law Group?

If you need assistance handling an office action from the USPTO regarding your trademark, it is vital to secure legal counsel from an experienced trademark attorney who can guide you through the situation with confidence.  The focus of The Kinder Law Group is trademark law, from assisting clients with the registration process to representing them in trademark infringement cases. We know that no two trademark office actions are entirely alike, and every trademark owner has unique needs and goals when it comes to navigating the office actions they face.

We provide comprehensive, client-focused legal counsel in all office action cases. Once you have received a notice of an official action from the USPTO regarding your trademark application, you must submit a formal response promptly. The Kinder Law Group will review the office action submitted to you and help you draft an appropriate response. Our team can also represent you in further correspondence with the USPTO to streamline the process of clearing up the office action you face.

What Is a Substantive USPTO Action?

If the USPTO sends you a notice of a substantive action against your trademark application, this means that there is a material problem with your trademark that prevents the USPTO from registering it. A few examples of issues with a trademark that can lead to substantive office actions include:

  • Likelihood of confusion. If the USPTO determines that your trademark would be too easily confused with an existing trademark, they may send you notice of an office action refusing registration under Section 2(d) because your trademark is likely to cause confusion with the other trademark.
  • Descriptive refusals. The USPTO may send you an office action that is substantive if they believe your trademark contains wording that is too descriptive of the underlying goods and services, and others need to use those words to describe their goods and services.
  • Rejected evidence of use. When you file a trademark application, you must provide a clear description of every intended use for your trademark as well as trademark specimens. The USPTO may send an office action on the grounds of rejected evidence of use if you do not submit an adequate specimen or fail to provide complete details for the intended uses of your trademark.

If you have received notice of a substantive office action against your trademark application, it’s vital to consult an Orange County trademark office action attorney as soon as possible to determine the best remedy to the situation.

What Is a Non-Substantive Office Action?

A non-substantive office action is less severe than a substantive office action and typically refers to minor issues with a trademark application. For example, the USPTO may require a complete description of your trademark, a review of the colors you intend to use for the reproduction of the mark, a more complete description of the goods and/or services that will use your mark, or the USPTO may simply submit a request for more information before they can continue processing your trademark application.

Nonfinal Vs. Final Office Actions

Whenever the USPTO encounters a problem with a trademark application, an examining attorney is designated to review the case and handle correspondence with the applicant. The trademark applicant will receive a nonfinal office action when the USPTO raises any type of legal issue with your trademark application for the first time. This allows the applicant to make necessary adjustments or arguments. If you receive a nonfinal office action from the USPTO, you have six months to respond.

As long as your response satisfies all the legal issues raised in the notice, the USPTO will continue to process your trademark application. However, if the USPTO detects any new problems or finds your response unsatisfactory, the examining attorney assigned to the case may send you another nonfinal office action asking for more information, further clarification, or an explanation of newly discovered issues.

Final actions are more serious. If you receive a final action from the USPTO, this means that its examining attorney has determined that the USPTO has raised legal issues with your trademark application for the last time. A trademark applicant can expect to receive a final office action once the examining attorney has addressed all legal issues with the application at least once. Once you receive the final office action from the USPTO, you have one more chance to provide them with a response that satisfies all the legal issues raised in the final office action. If your response is satisfactory, then your application will proceed through the approval process. If it is not, then the USPTO will effectively abandon your application, and you will need to file an appeal through the USPTO’s Trademark Trial and Appeal Board.

It is important to note that while the USPTO generally considers a response to an office action “timely” if sent within six months, it is prudent to file sooner. The USPTO is even considering having shorter deadlines in some instances. This is another example of why it is crucial to work with an experienced Orange County trademark office actions lawyer if you receive any notice of an office action from the USPTO. Your attorney can help you submit a complete and timely response so that your trademark application can proceed uninterrupted by further disputes.

How Much Does Legal Representation for USPTO Office Actions Cost?

Our flat fee varies depending upon the nature of the Office Action, because some Office Actions raise issues that are non-substantive in nature (i.e., issues with descriptions of the mark, color claims, descriptions of goods/services, requests for information, and the like) while other Office Actions raise issues that are substantive in nature (i.e., refusals on grounds of likelihood of confusion, merely descriptive refusals, rejections of evidence of use, and the like).  A trademark attorney with The Kinder Law Group will review and evaluate the official correspondence from U.S. Patent and Trademark Office “Office Action,” consult with you regarding the strategy for overcoming the refusal, prepare and file the response, and undertake phone conferences as needed with the Examining Attorney. The Kinder Law Group has successfully overcome numerous refusals and can give you an honest evaluation of the likelihood of overcoming the refusal before you proceed.

As you can see, our flat fee depends on a few factors, but we will explain all of that during your free consultation. 

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