Trademark Office Action: how to respond

미국 상표 USPTO Principal Register 빠른 시일내에 강력한 상표를 취득 상표 출원, 중간 사건(OA) 대행 상표 침해에 대한 분쟁 및 소송

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.

Sometimes it’s not a good idea to proceed with responding office actions. Use free consultation to figure out whether it’s a good idea or not. You may also get a rough idea about cost and timeline.

By Youngsik Jeon, Esq.

J.D. Chicago-Kent College of Law; Georgia & Illinois Bar Member; USPTO Registered Patent Attorney