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Office Action 
Response Services

Understanding Office Actions


What is an Office Action?


An office action is an official communication from the United States Patent and Trademark Office (USPTO) that requires a response from the applicant. It is issued when an examining attorney at the USPTO encounters issues with the trademark application. These issues can pertain to a range of factors, from issues with the mark itself to potential conflicts with existing trademarks.


Types of Office Actions

  1. Substantive Office Action: This type of office action addresses substantive issues with the application, such as conflicts with existing trademarks or deficiencies in the description of goods or services.

  2. Non-Substantive Office Action: These are typically administrative or procedural in nature, requesting clarification or additional information about the application.

How We Help Navigate Office Actions

1. Expert Analysis of Office Action

When you receive an office action, it's crucial to decipher the precise nature of the issues raised. Our experienced attorneys conduct a meticulous analysis of the office action, breaking down the specific concerns outlined by the USPTO. For example, you may have received an office action citing a likelihood of confusion with an existing trademark. In this situation, our attorneys thoroughly examine the cited trademark, assess the similarities and differences, and develop a strategic response to address this concern.

2. Tailored Response Strategy

Crafting an effective response to an office action requires a customized approach. We understand that each case is unique, and our attorneys devise a response strategy that aligns with your specific situation and the issues raised. Let say you receive office action that raises a concern about the accuracy of the specimen provided. How can this be resolved? First, we will work closely with you to gather the necessary documentation and evidence. Then, we will construct a response that provides a clear and compelling argument in support of your application.​

3. Clear Communication with the USPTO

Our team acts as your liaison with the USPTO, ensuring that all communications are precise, professional, and timely. We handle all interactions with the examining attorney, leaving you with the peace of mind that your application is in capable hands.

4. Timely Responses to Meet Deadlines

Office actions come with specific response deadlines that are critical to meet. Our team is committed to ensuring that all responses are submitted within the designated timeframe, preventing any unnecessary delays in the trademark registration process. 

5. Maximizing the Chances of Success

Our goal is to secure the successful registration of your trademark. With a combination of legal expertise and strategic thinking, we aim to address the concerns outlined in the office action in a manner that aligns with your business objectives. For example, if the office action raises multiple issues, including a potential conflict with an existing trademark and a deficiency in the description of goods, we develop a comprehensive response that not only resolves each specific concern but also strengthens your overall case for trademark registration.

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