Helped Clients Recover Over $25 Billion. Since 1979.
Helped Clients Recover Over $25 Billion. Since 1979.
Receiving a trademark Office Action from the USPTO can feel like a setback, but it is often a normal part of the registration process. At the Schenk Law Firm, we help businesses respond strategically and keep their applications moving forward.
Office Action Response Drafting
We prepare detailed, well-supported responses to USPTO Office Actions, whether the examining attorney raised a likelihood-of-confusion refusal under Section 2(d), a merely descriptive refusal under Section 2(e)(1), or a technical deficiency in the identification of goods and services.
Likelihood of Confusion Rebuttals
When the USPTO cites an existing registration as a bar to your application, we analyze the du Pont factors, gather evidence of commercial distinctions, and build a persuasive argument that confusion in the marketplace is unlikely.
Descriptiveness and Distinctiveness Arguments
A 2(e)(1) refusal does not have to end your application. We can argue inherent distinctiveness, submit evidence of acquired distinctiveness under Section 2(f), or amend the application to seek registration on the Supplemental Register where appropriate.
Specimen and Identification Amendments
If the USPTO rejects your specimen as failing to show use in commerce, or requires a narrowed identification of goods and services, we prepare substitute specimens, advisory opinions, and amended identifications that satisfy examining attorney requirements.
TTAB Appeals and Petitions
When an examining attorney issues a final refusal, we file appeals before the Trademark Trial and Appeal Board and pursue petitions to the Director when procedural issues warrant direct review outside the normal examination process.
I received an Office Action. What happens if I ignore it?
If you do not respond to a USPTO Office Action within the six-month statutory deadline, your application will go abandoned. An abandoned application can be revived only in limited circumstances and only within two months of the abandonment date through a petition. It is almost always better to respond on time, even if more time is needed to gather evidence.
What is the difference between a non-final and final Office Action?
A non-final Office Action is the examining attorney’s first substantive rejection, giving you the opportunity to respond and potentially overcome the refusal. A final Office Action means the examining attorney has reviewed your response and maintained the refusal. After a final rejection, your options are to file a Request for Reconsideration, appeal to the TTAB, or let the application go abandoned.
How long do I have to respond to a USPTO Office Action?
The standard response period is three months from the date the Office Action is issued. You may request a three-month extension. Missing the final deadline results in abandonment with no automatic extension available.
Can I extend my time to respond to an Office Action?
For applications under the older six-month system, extensions are generally not available for substantive refusals. Under the three-month system, you may extend up to six months total by paying a surcharge. The USPTO does not grant discretionary extensions for substantive Office Actions the way courts grant continuances, so early preparation matters.
What are my chances of overcoming a likelihood-of-confusion refusal?
Success depends on the specific facts, including how similar the marks are, how closely related the goods or services are, and whether the cited mark is in active use. David Lizerbram, who handles trademark matters at the Schenk Law Firm, has more than 23 years of experience and over 850 trademark filings, and can evaluate the strength of your position before you invest time and money in a response.
23+ Years of Trademark Experience
David Lizerbram has practiced trademark law for more than two decades, advising hundreds of clients on USPTO examination procedures and Office Action responses. His experience spans industries from consumer goods and technology to hospitality and professional services.
Over 850 Trademark Filings
The Schenk Law Firm has guided clients through more than 850 trademark filings, including applications that encountered substantive refusals and were successfully registered after contested Office Action responses. That volume reflects real familiarity with how examining attorneys think and what arguments move the needle.
Business Law Counsel Since 2007
We have served business clients from our North Park, San Diego location since 2005, combining intellectual property work with broader business law counsel. Clients benefit from attorneys who understand how trademark protection fits into the larger picture of building and operating a company.
The Schenk Law Firm serves business owners across the United States and internationally who need skilled counsel for USPTO Office Action responses. Federal trademark registration is a national process, and we work with clients in every state.
A USPTO Office Action is not the end of the road. With the right response strategy and supporting evidence, many refusals can be overcome. Contact the Schenk Law Firm today to discuss your application and find out what options are available before your deadline passes.
