I Received a Trademark Office Action and Have No US Attorney

What an office action actually is

An office action is a letter from the examining attorney assigned to your application, setting out something that must be resolved before your mark can register. It is a normal part of US trademark examination. A great many applications receive one. It is not a rejection, and it is not the end.

What it usually says falls into a few categories:

• A likelihood of confusion refusal. The examiner believes your mark is too close to a mark already registered or applied for. This is the most serious common refusal and the one that most rewards a properly argued response.
• A descriptiveness refusal. The examiner believes your mark describes what you sell rather than distinguishing who sells it.
• A specimen refusal. The evidence of use you submitted does not show the mark as customers actually encounter it. Very common for applicants filing from abroad.
• A problem with the description of goods and services. Usually the wording is too broad or does not match how US examiners classify things. Extremely common on Madrid Protocol requests, where the description was written for another country’s office.
• A requirement to appoint a US-licensed attorney. If you filed from outside the United States without counsel, this arrives on its own or alongside the rest.

One letter can contain several of these at once. The requirement to appoint counsel does not replace the others — you still have to answer everything.

The deadline, and why it comes first

Before you read the substance, find the deadline. It is stated on the letter, and it governs everything.

If the response period passes without a complete response, the application is abandoned. Abandoned is not paused. Your filing date stops protecting you, and anyone who filed after you moves ahead. Reviving an abandoned application is possible only in narrow circumstances, costs a further fee, and is never something to rely on.

Two practical points. First, the deadline runs from the date on the letter, not from the day you noticed it — and if your correspondence address was wrong or unmonitored, weeks may already have gone. Second, an extension may be available in some circumstances, but it must be requested properly and paid for before the original deadline expires. It is not automatic and it is not retroactive.

So: read the date first, then everything else.

Why you cannot respond yourself

Since 3 August 2019, an applicant domiciled outside the United States must be represented by a US-licensed attorney in all trademark matters before the USPTO. Responding to an office action is squarely one of those matters.

If you file a response yourself, it does not count. The USPTO will not treat it as a valid response, the deadline keeps running, and applicants in exactly this position lose applications every year by assuming that a submitted response is a good response.

The same is true of a foreign attorney or agent, however qualified in their own country, with the single narrow exception of reciprocally recognised Canadian trademark attorneys and agents — who may act as additional representatives, but never instead of a US-licensed attorney of record. The full rule is set out in the US attorney requirement explained.

What to do, in order

1. Find the response deadline on the letter and write it down. Nothing else matters until you know how much time you have.
2. Locate your serial number — an eight-digit number on the letter. It is how any attorney will find your file.
3. Do not file anything yourself. A defective response can make things worse: statements made to the USPTO become part of the record and can be used against your mark later.
4. Appoint a US-licensed attorney, giving them enough time to do the work. A likelihood-of-confusion response needs research and argument; it is not a form.
5. Gather the evidence the refusal calls for: for a specimen refusal, genuine photographs or screenshots of the mark in real use; for descriptiveness, evidence of how long and how widely you have used the mark.

If the deadline has already passed

Do not assume it is over. Depending on how long ago it passed and why, there may be a route back — a petition to revive, where the delay was unintentional, filed within the permitted window and with the required fee.

The window is limited and it does not reopen. If you are reading this having found an old letter, the useful thing is to establish the exact dates now rather than later. Every week of delay narrows the options.

And if revival is genuinely out of reach, the situation is still not hopeless. Refiling is usually possible. You lose the original filing date, which matters, but the mark itself is not forfeited by an abandoned application.

What a response costs

It depends entirely on what the refusal says, and any firm that quotes you before reading the letter is guessing.

A requirement to appoint counsel, or a straightforward amendment to the description of goods, is quick work. A likelihood-of-confusion refusal is a piece of legal argument that may need evidence, and it is priced accordingly. A specimen refusal sits between the two, and sometimes the honest answer is that your current use will not support registration and you would be better served changing the filing basis.

We quote flat, per response, after reading the actual office action — and if the refusal is not answerable on the facts, we say so rather than charging you to find out. Our published prices are on the fees page.