Therefore, most trademark lawyers recommend that anyone who receives an office action should seek out trademark council. While the USPTO examining attorney typically sets forth what the issue is, and even provides some of the underlying law that applies, an experienced trademark attorney can help craft the best arguments for the trademark applicant. For example, if their is a likelihood of confusion refusal as part of an office action, a trademark attorney can identify whether or not there truly is a liklihood of confusion or propose alternatives that could allow the application to proceed to regestration, such as a co-excistance agreement or consent agreement. Similarly, if there is a refusal due to mere discriptiveness in an office action, a trademark attorney may be able to advise on ways to overcome such refusal or otherwise help navigate registration on the suplimental register with hope of future registration on the principle regester. Regardless, an office action is a very important piece of the application process, one that must be answered within six months, and faliure to overcome may ultimatly lead to refusal of the application with the only option left being to appeal via the TTAB.
You would be well served to speak to a trademark attorney if you receive an office action.
Comments