Categories
Intellectual Property Trademark Trademark Examination Trademark Maintenance

Trademark Office Action and Maintenance

It does not end with filing your application.

You’ll likely need to file necessary documents, respond to USPTO’s rejections (called Office Action), and so on. It could take months, and even after it finally gets registered, you need to keep maintaining its status.

Office Action
Maintenance

There’s much more to learn, but …

It’ll be impossible to address everything here. If you have something specific in mind, please consult a professional.

Categories
Intellectual Property Trademark Trademark Examination

Trademark Office Action

Common questions:
office-action

Office Action calls for a legal writing.

When there is problem with your trademark application, the Office will issue an OA.  There could be multiple instances of OA per application while many trademarks get registered without any.

Sometimes, a simple change to your application can fix the problem, so the only thing you need to is agreeing with the change. But often you must rebut the rejection with legal arguments. This provides you of an opportunity to clarify and strengthen your application (and the trademark), but a wrong response could render the trademark unenforceable or nominal.

You must understand the reason for rejection clearly and respond to every issue to the full extent. You might find it helpful to review similar OAs and corresponding responses from another applicants on the TSDR (Trademark Status & Document Retrieval), which is open to the public and FREE. Although you can borrow their legal argument and logic, you must apply them to your facts.

Consult an attorney regarding an OA - Make It Happen

Categories
Intellectual Property Trademark Trademark Application Trademark Examination

Should you hire an attorney?

Getting a trademark, you can either "do it yourself" or hire a professionals.

Let's compare these two options.

Do it yourself

Professional Help

Mark

Your choice of wording and design

Likely a better wording and design

Registration

online trademark search/registration

via your representative

Cost

USPTO fees + $100 commercial service fees

USPTO fees + up to $2,000 attorney fees + design cost

Trademark registration is not too complicated.

Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO's Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.

USPTO offers an online application form through TEAS (Trademark Electronic Application System).

There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don't make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.

 

Go back to find out more about Trademark Application.