Over 60% of trademark applications receive an office action from the USPTO. Our attorneys review the issues, build a strategy, and file a response designed to keep your application moving forward.
Pricing
Know your cost upfront. No hourly billing, no surprises.
per office action
For office actions requiring clerical corrections - amended descriptions, specimen resubmissions, disclaimer compliance, and similar non-substantive issues.
per office action
For office actions involving legal refusals - likelihood of confusion, descriptiveness, surname refusals, and other substantive issues requiring legal argument.
Complex matters involving multiple refusals or appeals may require a custom quote. We'll confirm the fee before starting work.
What We Handle
These are the issues we see most often - and resolve most often.
The most common substantive refusal. The USPTO believes your mark is too similar to an existing registration. We build arguments around the differences in marks, goods/services, trade channels, and consumer sophistication.
The USPTO has determined your mark merely describes a feature, quality, or characteristic of your goods or services. We can argue acquired distinctiveness, submit evidence of secondary meaning, or amend to the Supplemental Register.
The specimen you submitted doesn't meet USPTO requirements - it may not show the mark in use, or it may not match the goods/services claimed. We help you identify and submit an acceptable specimen.
The USPTO requires you to clarify or narrow your description. We draft precise language that satisfies the examining attorney while preserving the broadest reasonable scope of protection.
The USPTO wants you to disclaim an unregistrable portion of your mark - such as a generic or descriptive term. We advise whether to comply or argue against the requirement.
The USPTO has refused your mark as primarily merely a surname or geographically descriptive. We evaluate whether to submit evidence of acquired distinctiveness or pursue an alternative strategy.
Our Process
From review to filing, here's what happens after you hire us.
Forward the office action letter you received from the USPTO. We'll review the issues raised and assess the best path forward.
Your attorney analyzes the examining attorney's objections, researches applicable case law, and develops a response strategy tailored to your situation.
We prepare a formal legal response addressing every issue - whether that's amending your description, submitting evidence of distinctiveness, or arguing against a likelihood-of-confusion refusal.
You review the draft response. We walk you through the arguments and evidence, answer your questions, and make any adjustments before filing.
We file the response with the USPTO before your deadline and confirm receipt. From there, we monitor the examining attorney's next action.
Why Reid IP
Office actions have a strict 3-month response deadline. We prioritize turnaround to give you time for review without risking abandonment.
We don't just fix clerical issues. When the USPTO raises a substantive refusal, we research the law and build persuasive legal arguments.
You'll know the cost before we start. No hourly surprises - just a flat fee for a complete, attorney-drafted response.
Most of our office action responses result in the application moving forward. When the first response doesn't resolve the issue, we advise on next steps including appeals.
FAQ
An office action is an official letter from a USPTO examining attorney identifying issues with your trademark application. It may raise substantive legal refusals (like likelihood of confusion) or procedural requirements (like amending your description of goods). You must respond within the deadline or your application will be abandoned.
You have 3 months from the date the office action is issued to file a response. You can purchase a 3-month extension for an additional USPTO fee, giving you 6 months total. We recommend acting quickly - the sooner we start, the more time you have for a thorough response.
If no response is filed within the deadline, the USPTO will abandon your application. Your filing fee is not refunded, and you would need to start the entire process over - including a new filing fee - if you still want to register the mark.
A non-final office action raises issues for the first time and allows you to respond directly to the examining attorney. A final office action is issued when your prior response didn't fully resolve the issues. After a final action, your options are typically to comply with all requirements, file a Request for Reconsideration, or appeal to the Trademark Trial and Appeal Board (TTAB).
Yes. Many of our clients originally filed their application pro se (without an attorney) or through a filing service. We can step in at the office action stage regardless of who filed the original application.
If the examining attorney issues a final refusal, we'll advise you on your options - which may include a Request for Reconsideration, an appeal to the TTAB, or amending the application. We'll give you an honest assessment of the likelihood of success for each path.
Send us your office action and we'll get back to you with an assessment and a clear plan - typically within one business day.