KLF Legal prepares and files responses to USPTO trademark office actions. Kenan L. Farrell is a USPTO-registered attorney who regularly appears before examining attorneys and the Trademark Trial and Appeal Board. If an examining attorney has raised informalities or a substantive refusal, we can review the letter, explain the issues, and file a response before the deadline.

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An office action is not a final rejection by itself. It is a required response point. Many applications receive at least one. The application will not move to publication or registration until every issue in the letter is addressed.

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For a plain-language explanation of deadlines and what happens after you respond, see What Happens After a Trademark Office Action.

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What this service covers

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The firm handles responses to nonfinal and final office actions issued against federal trademark applications, including:

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• Informalities and technical requirements (identification of goods or services, entity information, disclaimers, translations, color claims, and similar items)

• Likelihood-of-confusion refusals under Section 2(d)

• Descriptiveness and other Section 2(e) refusals

• Specimen refusals and substitute-specimen issues

• Surname, geographic, and ornamentation refusals

• Refusal or requirement involving a drawing, color claim, or standard-character vs. special-form mark

• Issues raised in a priority action or examiner’s amendment that still require a written response

 

If the better next step is an amendment, a request for reconsideration, an appeal to the TTAB, or a new application rather than a fight on the current record, that is part of the advice. The goal is a response that matches the record and the client’s actual use, not a form letter.

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Deadline

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For most applications filed under Section 1 or Section 44, the USPTO must receive the response within three months of the issue date on the office action. One three-month extension is available if the extension request and USPTO fee are filed before that first deadline. Madrid applications under Section 66(a) generally have six months from the issue date and no extension.

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The issue date on the letter controls, not the day the email was opened. Eastern Time controls. A transmission problem is not an excuse. If the deadline falls on a weekend or federal holiday, the next business day is timely.

If no response or extension is filed in time, the application is abandoned. Revival is sometimes available by petition, but it is a separate filing with a USPTO fee and is not a substitute for calendaring the original deadline.

How a response is prepared

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1. Send the office action and the application serial number.

2. The firm reviews the letter, the drawing, the identification of goods or services, the specimen (if any), and the cited registrations or other evidence.

3. You receive a plain-language summary of each issue, the realistic options, and a fee quote before the firm is retained.

4. Informalities can often be fixed from the existing record. Substantive refusals usually need your facts: how the mark is used, who the customers are, what the goods actually are, and whether coexistence, a consent, a disclaimer, or an amendment is even possible.

5. The response is drafted, reviewed with you, and filed through TEAS. You receive a copy of what was filed.

 

Substantive issues take longer than informalities. Do not wait until the last two weeks of the three-month window, especially on a 2(d) or specimen refusal.

What we need from you

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• The office action PDF and serial number

• How the mark is used in commerce, or the plan for use if the application is intent-to-use

• Current website, packaging, advertising, and any specimen you already submitted

• Whether you know the owner of a cited mark, and whether there is any relationship or consent discussion

• Any prior filings, assignments, or name changes that are not yet in the USPTO record​

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Incomplete facts produce weak responses. A 2(d) argument that ignores how the goods are actually sold is easy for an examining attorney to maintain.

Fees

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Office action work is not included in the firm’s flat-fee trademark application packages. Fees for a response are quoted after the letter is reviewed, before the firm is retained. Informalities and substantive refusals are not the same amount of work.

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USPTO fees for an extension request, a petition to revive, or a TTAB appeal are government fees. They are separate from the firm’s legal fee. Confirm current USPTO amounts on the USPTO fee schedule.

After the response is filed

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The examining attorney may approve the application for publication, issue a new office action, or issue a final action. Publication is not registration. Intent-to-use applications still need a statement of use after a notice of allowance. A final action can be addressed by compliance, a request for reconsideration, or an appeal. Those next steps are discussed if they arise.

Frequently asked questions

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Do I have to hire an attorney to respond?

The USPTO will accept a response from the applicant. A substantive refusal - especially likelihood of confusion or a failed specimen - is a legal argument about the record. The firm’s work is that argument, filed correctly and on time.

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Is an office action a rejection of my trademark?

No. It means the application cannot proceed until the issues in the letter are addressed. Some issues are technical. Some are serious. The letter has to be read issue by issue.

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Can you guarantee the refusal will be withdrawn?

No. A response can be well supported and still fail. The examining attorney may maintain the refusal. The honest assessment is part of the consult: whether to respond, amend, consent, appeal, or file a different mark.

 

What if I already missed the deadline?

The application is likely abandoned. Ask whether a petition to revive is available on the facts. Do not assume the mark is gone, and do not assume revival is automatic.

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Can you respond if someone else filed the application?

Often yes, after the applicant appoints the firm as attorney of record. Bring the serial number and the office action.

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If you have received an office action, send the letter and serial number as soon as you can. The first conversation is a free telephone consultation.