Respond to USPTO Actions
Substantive Office Action Response
What Is a Substantive Office Action?
Substantive Office Actions are refusals based on the content of the trademark itself. These typically arise when the USPTO believes a trademark is too similar to an existing mark, is overly descriptive of the goods or services being offered, or is being used decoratively rather than as a source identifier.
Responding to these actions requires a focused legal strategy, involving detailed analysis of the USPTO’s reasoning and application of relevant trademark law to support a rebuttal.
Our process begins with a thorough review of the Office Action, followed by a plain-language report outlining the key issues, legal considerations, and our assessment of your likelihood of overcoming the refusal. Should you decide to proceed, we will then prepare a tailored legal response and file it with the USPTO on your behalf.
Services Include:
Attorney will update your application to come into compliance with the USPTO office action.
There are a few common reasons why the USPTO has delayed your trademark application, including procedural office actions, substantive office actions, and requests for statements of use. We can help you determine what the USPTO is asking for, and get your application back on track.
Flat Fee: $1200
Procedural Office Action Response
What Is a Procedural Office Action?
Procedural office actions are refusals issued for reasons unrelated to the substance of the trademark itself. These typically arise from technical issues within the application, such as problems with the specimen, incomplete or incorrect ownership information, or concerns regarding the description of the trademark. Fortunately, such matters are often straightforward and can be resolved relatively quickly.
Services Include:
Attorney will update your application to come into compliance with the USPTO office action.
Flat Fee: $200
Statement of Use .
What Is a Statement of Use?
A key part of the trademark application process is showing that your trademark is actively being used in the marketplace. This is done through a Statement of Use (SOU)—a legal filing submitted to the U.S. Patent and Trademark Office (USPTO) that confirms your mark is being used in commerce.
Submitting a Statement of Use involves a few important steps: a sworn declaration, at least one clear example (or "specimen") of the trademark in use, and the required government fees. As your attorney, I’ll handle the drafting of the sworn declaration and guide you through selecting and preparing the right examples to meet the USPTO’s requirements.
Services Include:
Attorney will draft sworn statement, and advise you on which specimen to use.
Flat Fee: $499
Extension of Statement of Use
Flat Fee: $200
What is an Extension of a Statement of Use?
If you filed your trademark application on an intent-to-use basis, you have a six-month window to submit your Statement of Use once the USPTO issues a Notice of Allowance. If you're not quite ready to file within that timeframe, we can assist you in requesting an extension to ensure you stay compliant with USPTO deadlines and keep your application active.
Services Include:
Attorney prepares brief to USPTO requesting an extension to your existing intent-to-use application