Office Action / Provisional Refusal
Even the most experienced trademark attorney cannot avoid an office action or provisional refusal by the U.S. Patent and Trademark Office.
This is because much is left to the discretion of the assigned Examining Attorney handling your trademark application, who may have a different opinion about the similarity of your mark, the relatedness of your goods or services, the significance of your mark, etc.
Among our staff is a former U.S. Patent and Trademark Office Examining Attorney who may be able to offer ways to resolve an office action refusal. Many times an office action or provisional refusal can be resolved by amending a trademark application in certain ways, as opposed to drafting lengthy legal arguments and attaching dozens of documents of evidence. We seek to find the most efficient way to overcome an office action or provisional refusal.
Moreover, it is important to keep in mind the long-term repercussions of a trademark registration. Since trademark registrations can be challenged in the first five years of registration, and in some cases, challenged indefinitely, we strive to make the trademark record solid and free from potential opposition or cancellation.