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Worst Possible Responses to a Trademark Office Action

[This transcript is a result of automated audio transcription from the video posted below. For help from Copyright Trademark Lawyer Brian Russ, visit http://www.CopyrightTrademarkLawyer.com or call 888-632-6623. Grammatical errors may be present in the transcript below. This transcript is for informational purposes only and may not be relied on as legal advice. This transcript is an advertisement and any mention of past successes do not guarantee future success.]

The worst possible responses to a trademark Office Action are made by folks who don’t have legal training or those who haven’t made the response before. I think one of the most common errors I see is that people think that they can just ignore the Office Action, wait until the last minute, ask for an extension (which won’t be approved), and then don’t respond at all. And if you don’t respond, then *poof* your trademark application is automatically abandoned and you’re out of luck.

The worst response to an Office Action is no response at all. And what makes me sad about the non-responses is that so many Office Actions are easy to address. Many, many Office Actions are administrative in nature (e.g., specimen replacement, proper classification, etc,). So not responding to a non-substantive Office Action is literally more disheartening to me then filing a bad response.

The second worst response to an Office Action is the response where you appeal to feelings and emotions rather than the underlying law itself. I see this happen with entrepreneurs and small business owners who think they can convince the USTPO Examining Attorney that their mark is worthy of registration without understanding that their mark conflicts or confuses with an existing mark. I especially see this a lot with marks similar to multinational firms where branding is crucial to their business plan (i.e., Apple). These firms are extremely protective of their brand – as they should be – and a small business owner’s argument that the small business won’t dilute the market may be true in reality, but trademark laws exist to protect existing property rights, meaning that small business owner is likely out of luck. The reason these emotional responses to Office Actions are unlikely to succeed is because they ignore the legal basis for which the Office Action was issued. That’s why so many small business owners and entrepreneurs need an attorney to respond to the Office Action because an Office Action response is essentially a legal pleading.

Don’t try to DIY the Office Action response process. That’s almost as bad as finding some rando non-lawyer offering legal services on the internet. Schedule a time to talk with me about your Office Action response strategy: