SUBSTANTIVE OFFICE ACTION RESPONSES

Once your application is submitted to the United States Patent and Trademark Office (USPTO), you may receive an office action from the USPTO raising a substantive issue. An office action that need a substantive office action requires a response that must be carefully addressed in a detailed rebuttal to the USPTO's refusal to register a trademark within three months of the date of the issuance of the office action.

It is important to hire an experienced attorney to address these issues because these responses must address specific and narrow legal issues, submit legal arguments, and sometimes include additional  evidence or amendments to defeat the refusal. A successful response involves a deep understanding of the specific reasons for the refusal and crafting a tailored rebuttal that addresses each issue raised by the USPTO examiner.

For example, office action is substantive if there is a Section 2(d) refusal based on "likelihood of confusion", Section 2(a) refusal for "scandalous or deceptive" marks, Section 2(b) refusal for marks that incorporate "flags or insignias", Section 2(c) refusal for marks that use a living individual's name without consent, 2(e)(1) refusal for "descriptive marks", 2(e)(2) refusal for "geographically descriptive marks", 2(e)(3) refusal for "geographically misdescriptive marks", 2(e)(4) refusal for marks comprising "primarily, merely a surname" as well as a variety of other statutes that prevent registering marks that mimic the Red Cross or are used in conjunction with marijuana.