The USPTO refused your trademark. You have a deadline.
An Office Action is not a rejection of your business. It is an examining attorney raising a legal objection that has to be answered, correctly and on time. Miss the deadline and the application goes abandoned, along with the filing fee and your place in line.
20+ years, IP and business litigation. Response scope and fee quoted before any work begins.
Why the deadline matters
You generally have three months from the issue date to respond, extendable once by three more months for a fee. That sounds like time. It is not, if the refusal is substantive and the answer requires evidence, argument, or a rethink of the application itself.
If no response is filed, the application goes abandoned. Not refused, not paused. Abandoned. Reviving one is possible in narrow circumstances and starting over means a new filing fee and a new place in the queue, on a date that may now sit behind someone else’s.
Not every Office Action is the same problem
Some are administrative. The specimen was wrong, the description of goods needs tightening, a disclaimer is required. Those are real deadlines but narrow problems, and plenty of applicants handle them without counsel.
Then there are the substantive refusals. The examining attorney says your mark is likely to be confused with one already registered, or that it merely describes what you sell, or that it is primarily a surname. These are legal conclusions, and they are arguable. What they require is a response that engages the actual reasoning, marshals the right evidence, and makes a record that holds up.
The distinction matters because the wrong response to a substantive refusal is often worse than a late one. Arguments you make now bind you later. Concessions you volunteer can narrow your rights permanently, well past registration.
Substantive refusals, answered on the record.
What a response engagement covers
WHAT IS INCLUDED
- Review of the Office Action and the cited references or grounds
- Assessment of the refusal and a candid read on what is arguable
- Response strategy, including whether amending the application serves you better than arguing
- Drafting and filing the response with the USPTO before the deadline
- Evidence gathering where the refusal calls for it
Scope and fee are quoted before the work begins, once the Office Action has been read. The refusal determines the work.
QUOTED SEPARATELY
- Appeals to the Trademark Trial and Appeal Board
- Opposition or cancellation proceedings
- Consent agreements or coexistence negotiations with a cited owner
- New applications or refiling strategy
- Enforcement or infringement matters
If your matter needs any of these, we will say so early rather than let the scope drift.
An Office Action is not the examiner telling you no. It is the examiner telling you what you have to answer. The difference is whether anyone answers it properly.
Is this worth counsel, or can you handle it?
WORTH A CONVERSATION
The refusal is substantive. A prior mark is cited against you, or the examiner called your mark descriptive or a surname. The brand matters to your business and the argument has to be made properly the first time, because it stays on the record.
YOU MAY NOT NEED US
The Office Action is purely administrative and the fix is obvious. A corrected specimen, a tightened description, a required disclaimer. We would rather tell you that than take the engagement. If you are unsure which kind you are holding, that is exactly what a Strategy Session is for.
Questions applicants ask
How long do I actually have?
Generally three months from the issue date, with a single three-month extension available for a fee. The deadline runs from the date on the Office Action, not the date you noticed it, which is why applications go abandoned over email that went unread.
Can I just respond myself?
You can. Whether you should depends entirely on what kind of refusal you received. Administrative fixes are often manageable. Substantive refusals are legal arguments, and what you say becomes part of the file. If you are not certain which you are dealing with, that is worth thirty minutes of someone’s time before you file anything.
The examiner cited a mark that looks nothing like mine.
That reaction is common and sometimes correct. Likelihood of confusion is not a visual comparison, it is a multi-factor legal test covering the marks, the goods, the trade channels, and the buyers. A refusal that feels obviously wrong may still need a properly built argument to overcome.
What does a response cost?
It depends on the refusal, which is why there is no flat fee posted here. A specimen objection and a contested 2(d) refusal with evidence are not the same work. The Office Action gets read first, then you get a scope and a fee before anything begins.
My deadline is close. Is it too late?
Not necessarily, but say so in your first message so it can be prioritized. If the deadline is genuinely too near to do the work properly, you will be told that rather than charged for a rushed filing.
Holding an Office Action with a deadline on it?
Send the Office Action and the deadline. You will get a straight read on what it is and what answering it takes.
Not sure whether your refusal needs counsel? A Strategy Session is $350, credited in full toward the work if you move forward.
Practical legal counsel for businesses building something worth protecting.