Office Action
Initial Refusals
If you receive an Office Action (aka Initial Refusal), this is not the end of the line. In many ways, this is the system working as intended for your protection. Your registration will only be valuable if all applications must meet a high standard. The Examiners hired by the USPTO are our first line of defense against eliminating inferior applications.
At Initiating Protection, we tell every client that files an application with us that they should expect an office action. We even tell them the type of refusal they should expect, whether or not we will be able to overcome it, and how much it will cost to do this. You should not trust any lawyer (or online service) who is not doing this for you.
Now that you know a refusal is likely, you should not plan on avoiding a refusal, but to be in a position to overcome it. We’ll prepare your application with the examiner in mind. What will they see? How will they respond? We want the application positioned in a way that allows us to get the refusals we want, which leads you towards the rights you want.
We have decades of experience in overcoming government refusals, including:
- Likelihood of confusion
- Descriptiveness
- Misdescriptiveness
- Failure to function
- Request for disclaimers
- Requests for amendments of identifications
- Requests for amendments of the description of the mark
- And many more…
We would love to help you with yours.
They Are Common
Receiving an Office Action or Initial Refusal is very common. In fact, if the application was filed by someone with experience, they should have told you to expect the refusal, the specific type of refusal to expect, how much it should cost to overcome the refusal, and what your chances are to overcome the refusal. If you didn’t hear this from your current counsel (or online service provider), it may make sense to change counsel.
One reason refusals are common is that we want to retain the integrity of the database of registered marks. We do not want a “rubber stamp” system—the registrations would have little value. The USPTO incentivizes the examiners to find refusals. While this initially frustrates many applicants, it is the way the game is played, and you want someone on your side who knows how to play the game.