Office Action Responses

Livonia Michigan trademark attorney

Office Action Responses in Detroit, MI

If you filed your trademark registration application on your own, you may now be in receipt of what is known as an “Office Action.”  

An Office Action is a refusal of your trademark registration application by the US Patent and Trademark Office (USPTO).  If you do not respond to the Office Action before the passing of a specific deadline, your trademark registration application will be Abandoned. That is, your registration will be denied. In other words, you will have no right to sue for infringement in Federal court and no right to claim the exclusive use of your mark.  However, there is good news. If you have received an Office Action, it is not too late to obtain professional assistance. A trademark attorney may still be able to draft and file your Office Action Response if you move quickly.  Noble Path Trademark Law can step into your case as your Counsel of Record and draft and file your Office Action Response. Depending on what issues need to be addressed, we will maximize your odds of overcoming the refusal and registering your trademark.

Do You Need a Lawyer to File an Office Action Response?

Technically, you can file a Response yourself.

However, as a non-lawyer, you are unlikely to overcome USPTO refusals. A realistic shot at overcoming refusal requires that you retain an experienced trademark attorney.

Retaining a US-licensed attorney is, in fact, your only alternative to doing-it-yourself.

Per USPTO Rule, only a US-licensed attorney can appear on your behalf and present legal arguments to the USPTO.

A discount website form-filing service cannot help you with an Office Action.

What Is the Deadline for Responding to a USPTO Office Action?

Currently, you must respond within 3 months of its filing, or your trademark registration application will be Abandoned by Default.

If you have received an Office Action, you have no time to waste in retaining an experienced trademark lawyer.

  • Review of and analysis of the issues raised and possible responses to your specific Office Action (note that some Applications filed by non-attorneys may be beyond help and will simply need to be re-filed—but we will tell you if we think that’s the case!).
  • Filing our Appearance as your Counsel of Record if an Office Action Response is merited;
  • Researching, drafting, and filing the Office Action Response;
  • Communicating actively with you throughout this process;
  • Advising you of further options should the Office Action Response fail to overcome the refusal.

Our Response Service Rates

We charge hourly or by flat fee depending upon the complexity of your particular Office Action.

Some Office Actions are “Administrative” in nature. That is, they are merely procedural refusals. These are requests by the USPTO to remedy some minor error (or multiple such errors) in your application. 

For Administrative Office Actions, we will nearly always charge a flat fee.

For more “substantive” Office Actions, including Likelihood of Confusion or Descriptiveness refusals, it is more likely that we will charge hourly with an advance retainer required-but not always. 

Your first step in obtaining a firm quotation is to follow the steps below to schedule an Initial Consultation with us.

Step 1: Simply email us the Office Action that you received in PDF format.

Step 2: We will review your Office Action and reply to your email with a quotation and brief discussion of the issues and options involved.

Step 3: Once you affirm your interest in proceeding, we will provide you a retainer agreement and payment link.

Step 4: After you have then formally retained us with signature and fee payment, we will get to work and ensure that your Office Action Response deadline is met.

Important Notes!

  • A USPTO Office Action defense is a form of Federal Civil Litigation
  • A further refusal (“Final Office Action”) may be appealed
  • The success of Appeals (or Requests for Reconsideration) are definitely not guaranteed!
  • Noble Path Trademark Law retains the right to decline your representation for any or no reason in its sole discretion.
  • Noble Path Trademark Law does not offer services with regard to frivolous or bad faith trademark registration applications or Office Action refusals.
  • Noble Path Trademark Law does not offer infringement litigation or negotiation services.
  • Noble Path Trademark Law does not offer cancellation proceedings or other TTAB litigation proceeding services.