USPTO Refusals
An Office Action is not a rejection. It is the examining attorney raising an issue that has to be answered, usually within three months. Answer it well and the application continues. Miss the deadline and the application is abandoned, along with the filing fee.
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“Attorney McCarthy is very knowledgeable and supportive during every step of the process.”
A prospective client may not obtain the same or similar results.
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Founding partners Breanna McCarthy and Channing Thomas handle trademark matters before the USPTO every week. Before private practice, Breanna processed trademark and business filings at the Kansas Secretary of State’s office.
Your application is prepared and filed by an admitted attorney, not a form-filling service.
Office Action Response
Quoted upfront • agreed in writing before work begins
What this quote does not cover: contested proceedings and litigation. Responding to an examining attorney is not the same as an appeal. Oppositions, cancellations, and appeals to the Trademark Trial and Appeal Board (TTAB), and any court action, sit outside this engagement and are quoted separately before any such work begins.
An office action is a refusal or a request, with a deadline attached. Many are overcome. Which ones depends on the ground cited and the evidence available.
The USPTO has written to you.
A different service applies.
Send us the serial number and we will tell you honestly what we think it will take, before you commit to anything.
Office Actions are not interchangeable. Some raise a procedural point that takes an hour to correct. Others refuse the mark outright on grounds that require legal argument, evidence of acquired distinctiveness, or a survey of the marketplace. Quoting a single flat fee across that range would mean overcharging most clients to cover the hardest cases.
So we read the Office Action first, tell you what it will take, and quote it before any work begins. If the refusal cannot realistically be overcome, we will say so rather than bill you to find out.
Already registered through us? Office Action responses are included in our $1,500 trademark registration package at no additional charge. This page is for marks filed elsewhere.
Most fall into a handful of categories, and the category largely determines the difficulty.
The examiner believes your mark is too close to an existing registration for related goods or services. These are substantive refusals and the most demanding to overcome, often turning on how the marks differ and how distinct the markets are.
The mark is said to describe a feature or quality of the goods rather than identify their source. Responses may argue the mark is suggestive rather than descriptive, or show that it has acquired distinctiveness through use.
The evidence you submitted does not show the mark used in commerce the way the rules require. Often correctable with a proper specimen, provided acceptable use can be shown within the deadline.
The description of goods or services is too broad, too vague, or in the wrong class. Usually procedural, and usually resolved with an amendment — but the amendment cannot broaden what you originally filed.
The examiner asks you to disclaim exclusive rights to a generic or descriptive portion of the mark. Frequently straightforward, though worth understanding what you are giving up before agreeing.
Missing information, an unsigned declaration, an ownership or entity detail to clarify. Low difficulty, but still fatal to the application if the deadline passes unanswered.
Forward the Office Action and your serial number. We confirm your response deadline the same day where we can.
We read the refusal and the examiner’s record, assess what it will take, and quote a flat fee in writing.
Legal argument, evidence, and any amendments required, drafted to address what the examiner actually raised.
We file with the USPTO and track the application through to the examiner’s next action.
Most Office Actions carry a three-month deadline, with an extension available for a fee in many cases. The deadline is stated on the Office Action itself. If it passes without a response, the application is abandoned.
No. It means the examining attorney has raised an issue requiring a response. Many applications receive one and go on to register. What matters is whether the refusal is procedural or substantive, and how it is answered.
Because the work ranges from a short amendment to a substantive legal argument backed by evidence. We quote once we have read the specific Office Action, so you are not charged for complexity your matter does not have.
No, and we will tell you when we think yours cannot. Some likelihood-of-confusion refusals are unlikely to be resolved, and in those cases rebranding or filing a different mark is often the better use of your money.
Yes. We frequently take over applications filed by the owner or by a filing service. We review the full record first, since choices made in the original application often shape what the response can argue.
No. The quote covers preparing and filing a response to the examining attorney. If the refusal becomes final, the next step is an appeal to the Trademark Trial and Appeal Board, and that is a separate adversarial proceeding with its own rules, briefing, and cost. The same applies to an opposition or a cancellation brought against your mark, and to litigation in any court. We will tell you plainly when you have reached that point, and quote that work separately, in writing, before it starts.
Filing a trademark is not just paperwork. It is a legal process that affects your rights, your brand protection, and your ability to enforce your mark. Lower-cost options can look appealing, but mistakes in the search, the classification, or the filing itself lead to delays, refusals, or lost protection.
| Feature | File It Yourself | DIY Service Platform | Full-Service Law Firm |
|---|---|---|---|
| Cost | Lowest upfront cost | Moderate, with add-on fees | Flat fee, predictable |
| Trademark search | Not included | Limited or automated | Comprehensive legal search |
| Attorney guidance | None | Minimal or optional | Full attorney guidance |
| Application filing | Self-prepared | Guided online forms | Attorney-prepared |
| USPTO compliance | Higher risk of errors | Basic automated checks | Reviewed for compliance |
| Office Actions | Handled on your own | Additional fees to assist | Responses included |
| Best for | Experienced filers | Straightforward applications | Long-term brand protection |
USPTO fees are not refunded when an application fails, and a lost filing date cannot be recovered.
The testimonials on this page reflect the experience of those individual clients. Every matter is different, and a prospective client may not obtain the same or similar results.
We will confirm your deadline, tell you what it will take, and quote it before any work begins.