When you file a trademark application with the United States Patent and Trademark Office (USPTO), you’re hoping for a smooth path to registration. But many applicants receive something unexpected: an Office Action. This is a formal letter from the USPTO examiner outlining issues with your application that must be addressed before it can proceed.
If you’ve received one, don’t panic—but do act fast.
What Is an Office Action?
An Office Action is essentially a refusal or request for clarification. It may address anything from minor formatting issues to major legal obstacles, such as a likelihood of confusion with an existing trademark or a finding that your mark is merely descriptive.
Most Office Actions come with a 6-month deadline—and if you miss it, your application will be abandoned, which means you’ll lose your place in line (and possibly your rights).
Can You Save Your Application?
Yes—but only if you respond properly and on time. That means more than just writing back to the USPTO; it often requires legal arguments, citations to case law, and a strategic understanding of trademark law.
Responding incorrectly can lock you into a weaker legal position—or worse, lead to a final refusal.
Why Hire an Attorney Immediately?
Trademark law is nuanced, and USPTO examiners don’t give second chances for free. Here’s why hiring an attorney right away is critical:
- Deadline pressure: You may have less time than you think, especially if you’ve delayed opening the notice.
- Legal complexity: Office Actions often involve legal arguments that require more than a Google search.
- Higher success rates: Applicants represented by attorneys have a statistically higher success rate at overcoming refusals.
- Preserving your investment: You’ve already paid for the application—don’t risk throwing that away over a misstep.
What Happens If You Ignore It?
If you fail to respond by the deadline, your application will be abandoned, and you’ll have to start over. That means paying new fees, possibly losing your priority date, and potentially letting another applicant beat you to the punch.
Bottom Line
An Office Action doesn’t mean your trademark is dead in the water—but it does mean you’re on the clock. Hiring an attorney right away gives you the best chance of saving your application and securing your trademark rights.
If you’ve received an Office Action and want help responding before the deadline, email us at contact@landrypllc.com or call 888-914-0011 to get started today. We’ll take care of the legal work, so you can stay focused on your business.
