What is an office action?

An office action is an official letter sent by the USPTO wherein a USPTO examining attorney lists any legal problems they believe are in your trademark application. These legal problems must be resolved before the application can move forward. Failure to resolve such legal problems will result in the application becoming abandoned. This essentially means that that the application has failed and that trademark registration will not be granted.

When to respond?

A response to an office action normally must be received by the USPTO within six months from the date that the office action is issued. Some deadlines are less than six months, so be sure to read the beginning of your office action carefully to determine the actual deadline for your response. Regardless of when a response is due, it’s smart to start working on it right away. It often takes time to properly research and resolve the issues within an office action

How to respond?

You may respond to the office action yourself by following the link within the office action. At times this may be the right decision, especially if the office action only involves a matter of submitting the correct payment. However, beware that even simple sounding office actions may be nuanced enough to adversely affect your legal rights in the future. This includes those office actions that contain suggestions from the examining attorney As a result, it’s almost always wise to hire a trademark attorney to respond for you.

The cost of responding to an office action can be as low as only $200. The cost of the response tends to increase as complexity increases. A trademark attorney should be able to quickly estimate how much it may cost to file a response after reviewing the office action.

How much does it cost?