U.S. FEDERAL TRADEMARK LAW SERVICES

Trademark Registation

OFFICE ACTION RESPONSES

We draft office action responses for applications we drafted
and for applications drafted by others

We handle all types of Office Actions large and small. If you have received an office action, contact us to see how we can help you overcome the refusal. We have drafted briefs for many types - here are some examples:

LIKELIHOOD OF CONFUSION

Refusals based on a likelihood of confusion are typically the most difficult office actions to overcome. This occurs when the Examining Attorney believes that your mark is too similar to an existing, related registration.

There are certain defenses that can be used to overcome the alleged likelihood of confusion. A well-drafted brief can win you your registration.

GENERIC TERMS

Office actions including a refusal based on a claim of generic terms occur as a result of the Examining Attorney claiming that the mark is comprised of a term that consumers would recognize as a common class of goods

SPECIMEN REFUSAL

Office actions based on specimen refusal may require our submission of substitute specimens that better meet the requirements.

Specimen refusals can often indicate a much deeper issue requiring major changes to the trademark application.

GEOGRAPHICALLY DESCRIPTIVE

Refusals based on geography occur when the Examining Attorney alleges that the mark describes a place and the goods or services are provided at that place, which is a well known geographic location or place.

This is a substantive office action that has the potential be overcome with a well-drafted brief.

ORNAMENTAL

Office Actions based on ornamental grounds occur when the Examining Attorney claims that your use of the mark is merely decorative.

We have overcome ornamental claims by providing substitute specimens. Some ornamental office actions will require a brief.

MERELY DESCRIPTIVE

Office actions based on claims of mere descriptiveness indicate that the Examining Attorney believes your mark is a literal description of what it is.

This response is substantive in nature and has more options than other office actions. We have successfully overcome many descriptive claims with response briefs.

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