3 Things You Might Not Know About USPTO Office Actions

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So you’ve recently created a new product or invention and are searching for a trademark lawyer to help you through the logistical nightmare that can be trademark law. However, the research actually doesn’t stop there.

Relatively often, there could be actions brought forth during the trademark and patent process that even the best patent attorneys wouldn’t anticipate. Even with one on your side, here are some things to be aware of should this happen during your patent process:


Though your trademark or patent lawyer should be able to guide you through the process, it’s not a bad idea to be familiar with the deadlines you’re up against too. The United States Patent and Trademark Office (USPTO) receives TONS of patent applications each year – over 500,000! Generally, if you receive an office action, you’ll have six months to respond before your application is left behind and you’re forced to start the entire process over. But it’s not a bad idea to double, triple, and quadruple check those deadlines!

Requirements and Refusals

We get that this terminology can be entirely daunting when you’ve been waiting patiently for your patent to come through. It doesn’t have to be! A requirement is simply a request for additional information regarding one (or multiple) parts of your forthcoming patent. Often, it’s just more clarity or specific details that are needed in this case.

A refusal MAY be more serious. For a multitude of reasons, this particular trademark application has been denied. However, it’s extremely possible that the lawyer you have in your corner can help to move forward and, ultimately, still put that patent in your hand.

Are You Facing One Issue or Multiple?

Even an experienced inventor or product producer may have difficulty deciphering exactly what’s needed when an office action is received by the USPTO. An experienced, reliable trademark attorney will help you to navigate through the trademark law and figure out what the actual issues are from the action. Sometimes, these issues are easily solved (like changing to more concise wording) and other times there are a multitude of complex moving parts. In some cases, navigating the action alone can cost more time and money in the long run.

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