Trademark Office Actions

What Are Common Reasons for An Office Action?

When people file their own applications, the most common reason for an office action is a refusal for a proposed mark being “confusingly similar” to an existing registration. While such objections can be overcome by a competent trademark attorney, knowledge of trademark principles and trademark law are important for overcoming this type of objection. If you receive an Office Action refusing registration on those grounds, be sure to contact Angela Langlotz for a consultation to evaluate the strength of your case.

Should I Hire an Attorney to Respond to an Office Action?

In most cases, absolutely. Remember: When you respond to an Office Action, you are making a permanent record that the trademark examiner will rely upon to decide if your mark should issue. If the trademark examiner still refuses to issue your mark, you can appeal to the Trademark Trial and Appeal Board, but you are stuck with the record that you made during the application process. If you made any damaging admissions, those could come back to haunt you later, and any attorney you hire might not be able to fix it. If your mark is important to you, then you should hire an attorney to look at the record that you made when you filed the original application, and then craft a great response.

What Happens if I Respond, But I Can’t Convince the Trademark Examiner to Issue My Mark?

Sometimes trademark examiners are wrong, and sometimes they are unreasonably stubborn. There is an appeal process via the Trademark Trial and Appeal Board if you feel your mark was unjustifiably refused. Trademark attorney Angela Langlotz is experienced with practice before the Trademark Trial and Appeal Board, and has had great success getting marks allowed that were unjustifiably rejected by a stubborn examiner.