What are my chances of overcoming an office action?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

Your chances of overcoming an office action depend on the reasons for its issuing.

Generally, the issues can be broken down into substantive and non-substantive. Non-substantive issues include technical errors, such as a missing domicile address, and are usually easy to fix.

Substantive issues are more complex and include problems with the mark itself, such as lack of distinctiveness or likelihood of confusion with a previously registered trademark. Here, your chances depend on the severity of the issue. The solution can include collecting additional evidence, limiting the list of goods and services or approaching a third party to negotiate a co-existence agreement.

Special mention goes to specimen refusals, which are quite common. The USPTO will reject a specimen if it's illegible, doesn't show a sufficient link between the mark and the goods and services, is digitally altered/a mockup, etc. The difficulty of overcoming this type of office action depends on your ability to provide a proper specimen.

If you want to know what your chances are, it's recommended that you consult a trademark attorney. Some office actions can be addressed in more than one way, and a professional can lay down your options and recommend the best course of action.

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