The following is a transcript of the video below.

An Office action is a response by the examining attorney at the US Patent and Trademark office, to an application. And perhaps you’ve received one, if you filed by yourself, or if you filed using an online filing service, you may have received an Office Action.

I’ve worked with clients who have received thousands of Office actions, and responded to at least 5,000 Office actions over the last 19 years.

An Office action is not a dead end for a trademark application. The applicant gets 6 months to respond, and there can be both procedural and substantive issues to address in an Office action, depending on what the contents are from the examining attorney. But many of the issues can be dealt with and addressed, and all of them can be argued and responded to. The most common issue that is a big deal is a likelihood of confusion refusal, which is a conflict with another registration, at least as initially perceived by the examining attorney. But the applicant can respond, and submit evidence, and arguments, and case citations, and try to convince the examining attorney why a likelihood of confusion is not appropriate for refusal.

Many other issues are procedural ones, like the description of goods and services, or the specimens of use that have been filed, or a disclaimer of a word, and those can almost always be dealt with in a relatively simple, straightforward response. Over the years, as I said, I’ve responded to countless ones, yet there are always unique issues, because the Office action is a very important part of the application process. And for each application, it is the critical part of the application process to deal with and respond, and hopefully from the applicant’s perspective, be able to overcome it.


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