The following is an edited transcript of Chapter 11 of my book video Building a Bold Brand: Responding to Office Action Refusals
Once a trademark application has been filed, it generally takes the USPTO approximately four months to complete its initial review. The review that takes place at that time is the first substantive step in the application process. In the majority of cases, something called an “Office Action” is issued by the USPTO following review of a trademark application, even when the application was filed by an attorney. An Office Action can cover procedural issues, substantive refusals, or both, as well as numerous issues or a single issue. Responding can be complex, and all applicants have six months to respond to the first Office Action.
An effective response requires a lot of nuance, such as knowing the relevant laws and cases, crafting an argument, attaching evidence, and possibly amending the application to change the analysis.
It is possible to respond without an attorney, but the risks and the time needed are significant. An improper or incomplete response can jeopardize the application, alter the protection available, result in additional USPTO fees, or delay the application process.
