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Home Service Mark Services Office Action Response
Overcome Office Action Letters with the Law
If you have received an Office Action from the United States Patent and Trademark Office (USPTO) for a service mark filing, then you are not alone. In fact, it often occurs when filings are rejected based on at least one legal ground. Without the help of an experienced trademark attorney, it may be difficult to properly respond to the legal objections raised in the Office Action letter.

Filing a service mark application initiates the substantive examination process where an Examining Attorney from the U.S. Government Trademark Office examines and reviews the filing. The main issue in trademark law is to prevent confusion. For example, trademark law protects consumers and businesses from being confused about the source of a product or service (i.e. who sells the items).

The Examining Attorney’s role is to review and examine your service mark filing and prevent confusion - among other things - with other active marks that have already been filed. Should an Office Action be sent out, a formal legal proceeding begins and is governed by about 1400 pages of Trademark Examining Procedures. You have six months to respond to the letter, otherwise your filing is considered abandoned. It is possible to respond late, however additional fees and explanation of the late response is required.

The most common rejections include similar confusion with other service marks, descriptive elements in a mark, clarifying items in the filing, and improper identification of goods and/or services. Depending on the legal ground of the rejection you receive, there are legal and factual arguments that can be put forth in a proper response to help you overcome the rejections. In most arguments, case law on the books is used in a response to argue objections in the Office Action letter. Generally, without the help of an experienced trademark attorney, it is difficult to properly respond to the legal objections raised in the Office Action letter.

If you need help in responding to a service mark Office Action letter, please fill out the form below. An experienced Trademark Attorney will contact you shortly to explain your options and give you a free cost estimate.

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