The following is a video transcript; the full video is below.

Over 20 years, I have written thousands of responses to the US Patent and Trademark Office (USPTO). When the USPTO reviews an application and require more information or there’s a procedural issue or a substantive refusal, they generally issue what’s called an office action. Not only have I written thousands of office action responses for my clients, but when I worked at the US Patent and Trademark Office, I reviewed many office action responses from the applicants at the time. Based on all that experience, I have distilled it into the five keys for writing an effective office action response.

Number one, read the office action thoroughly. I say this because the office actions are hard to read. They’re poorly formatted, they’re full of lots of jargon and statutes and cases, and they’re oftentimes full of what’s called form paragraphs, which is like, essentially, automated language about the topic. To find the real meat, the real substance of what the examiner wants or what they’re asking for, can be challenging, and that’s why it’s very important to read it thoroughly.

Number two, once you’ve identified what the issues are that need to be responded to, you need to research carefully the facts and the law that apply to that issue. Generally, likelihood of confusion or merely descriptive are the two key substantive issues. When researching the facts and law on those issues, you can also use the trademark database (TESS) to search for similar situations or similar trademarks that have gone through the process and that were approved or that were denied, and that could help your argument, or that may have arguments within their case history that could help your arguments.

The third key is clear writing. I’ve personally found that the most successful office action responses are not written like legal briefs, and they’re not written like college essays, and they’re not written like a business memorandum. They’re really a combination of these things, mostly a combination of a business memo and a legal brief. They should be clear and to-the-point and concise. You don’t want to use a lot of flourishing language – it’s not necessary. But you do want to outline what the law is, what the case law is that governs, and then discuss how it applies to the facts and issues at hand.

The fourth key, and this one might be the most important one, is effective evidence. Evidence is really what gets over the threshold in many, many cases in getting a refusal withdrawn. Evidence can be from the Internet. It can be from reference materials. It can be from other trademark registrations, third-party marks that are in use, or registered. There’s a whole variety of evidence, and there’s a whole set of rules for how you introduce evidence. There’s a procedure for how you make the evidence effective. So you want to make sure that you have good evidence to support your arguments.

Finally, the fifth key is to choose the most important key arguments in your response and not, as I’ve seen some do, throw the kitchen sink at it. So if in response to a likelihood of confusion refusal, there might be five different approaches one could take, five different arguments one could make, I generally would not make all five of those arguments. I would focus on maybe two or maybe three of the top most effective arguments that are hopefully going to convince the examiner. I find that if you throw all the arguments out there, it actually dilutes the strength of your arguments, and it actually makes you look like you’re desperate and like you’ll say anything to try to get it approved.

Those are my five keys to writing an effective office action response. Of course, I also recommend that if you’ve received an office action, you talk to an experienced attorney who’s familiar with these issues, because there is a lot of nuance to it. and there is a lot of detailed and specific procedure to the USPTO application process.


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