Trademarks and service marks are not registered automatically, and trademark applications with the USPTO do not always go off without a hitch. The trademark examining attorney may take issue with one or more parts of an applicant’s (be that an individual, LLC, partnership, or corporation) trademark application, whether the application pertains to a business name, logo, slogan, tagline, or something else. Oftentimes an applicant is unaware of any defects concerning its trademark application until several months after filing it. Then, seemingly out of nowhere, a technical letter arrives via email from the USPTO trademark examining attorney called an “Office Action”. Receiving one can be overwhelming. An applicant may be thinking at the time of reading the letter that the time to enlist attorney for professional advice has come.
Indeed, there are some applicants who choose to file trademark applications on their own. While this law firm generally does not recommend such a practice, it nonetheless occurs. An applicant’s receipt of a technical Office Action, perhaps a refusal that raised legal objections, may cause him or her to rethink the strategy of proceeding unrepresented and diligently search for the services of an experienced trademark attorney.
Refusals can come in various shapes and sizes and impose a range of encumbrance on the applicant. They may ask the applicant to modify the identification of the goods and/or services, disclaim a portion of the service mark or trademark, provide a substitute specimen, demonstrate how there is not a likelihood of confusion with one or more registered trademarks or service marks, or explain how the applicant’s applied-for mark is not merely descriptive. The latter two can be particularly demanding. A refusal is written by the trademark examining attorney assigned to the respective trademark application within the USPTO, who after performing a legal examination of the application determined that one or more issues existed. The failure to timely respond to a refusal will cause the application to abandon. An abandoned application is generally undesirable as it cannot mature into registration.
Office Actions and refusals can be overcome (with varying degrees of difficulty). The result of their overcoming is that the underlying trademark applications get back on track towards registration. Trademark attorneys often play a key role in achieving this outcome, but there is certainly no guarantee of success no matter how skilled the lawyer.
Attorney’s fees vary for responding to Office Actions. The fee can be as little as a few hundred dollars to as large as several thousand or more. Each trademark application is unique and requires an understanding of the factual and legal circumstances affecting it.
This law firm has experience with responding to USPTO Office Actions. If you would like to make an appointment with Kincaid Business & Entrepreneurial Law, LLC ® regarding a trademark law matter, whether in connection with initiating a trademark application or responding to a USPTO Office Action after an application has already been commenced, please feel free to conveniently schedule with us here. You may also wish to read more about intellectual property law and trademark law on our website.