25 Office Action Response Tips

• Know when the deadline is. It’s generally going to be three months from the time the office action was issued.
• The rules that govern what you can and cannot do related to the office action response are in the Trademark Manual of Examining Procedure.
• It’s also important to know the procedures related to how an application and an office action goes through the long and winding road of trademark registration. 
• Also important to know about the proper USPTO forms, where to find them, how to use them, the filing system called TEAS.
• Also important to know about the difference between a first office action and a final office action and the responses to them.
• Know about the options and when they might apply for appealing to the trademark trial and appeal board.
• Also useful to know about the difference between an appeal and a request for reconsideration.
• Of course, in building a substantive response, it’s going to be very important to know about the relevant cases and laws that apply like the DuPont factors,
• Important to know about what types of research and where to do research that might help you build a great response.
• Also, of course, valuable to know about how to use evidence to support your response
• Know how to properly attach evidence and make of record. This evidence. I can tell you I’ve seen many, many times when an applicant has gon
• There’s a specific type of evidence called third party evidence, and it’s valuable to know about what that is, when it can be helpful, and how and where to find such third party evidence and third party registrations.
• Understand writing style and being persuasive in writing that response.
• Work with an attorney. That would be one of the key tips in an office action response and counterintuitive.
• Sometimes going slower is better. Sometimes being quick to respond may actually limit some of your options in the chess match. That can be getting your application through the registration process.
• Sometimes seeking consent from another party is a helpful part of the process, but you need to know when and why and how.
• Sometimes petitioning to cancel a registration that’s blocking an application can be helpful, but again, need to know how and when and why.
• Sometimes claiming acquired distinctiveness can be helpful in the application process. You need to know when and why and how that might apply.
• Another tip is knowing when it might be useful to contact the USPTO examiner to discuss the issues and how and where to contact them.
• Knowing how to use the public records to find other examples of comparable situations can be very helpful. Knowing how to use the public records to find the application or prosecution history for a cited registration can be critical.
• There might be instances when no response is the best response because everything you say in the application process is going into the public records.

For more, see: https://www.erikpelton.com/services/office-action-responses/