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Filed with the USPTO

The USPTO sent an office action. Here is what happens next.

Procedural and substantive USPTO office action responses drafted and filed on your behalf. Miss the deadline and your application is abandoned. Respond incorrectly and the refusal stands. Neither outcome is acceptable.

Procedural OA $300
Substantive OA $550
USPTO Fee Usually None*
Response Deadline 3 Months from OA

The Service

What an office action is and why it matters.

An office action is an official communication from the USPTO examiner assigned to your trademark application. It means the examiner has identified an issue with your application that must be resolved before your mark can move forward to registration. Office actions are common and many applications receive at least one, but they require a timely and accurate response.

The response deadline is typically three months from the date the office action is issued, with one possible three-month extension available for a fee. If no response is filed by the deadline, your application is abandoned. An abandoned application means you lose your filing date and must start the process over from scratch.

Not all office actions are equal. A procedural office action raises administrative issues that can generally be resolved with clarification or amended language. A substantive office action raises a legal objection that requires an attorney to build a formal legal argument for why your mark should be approved. The two types require different levels of work and are priced accordingly.

If you filed your application with Armani under the Standard or Premium Filing package, procedural office action responses are already included. If you filed on your own or with another service and received an office action, Armani can step in, review your application, and handle the response regardless of how the original filing was prepared.

What's Included

Two types of office actions. Two flat fees.

Procedural Office Action Response - $300

Procedural office actions are administrative in nature. They ask for clarification, correction, or additional information. Armani handles all of the following under the procedural response fee:

Amending Identification of Goods and Services Revising the description of your goods or services to match acceptable USPTO identification language.
Specimen of Use Issues Advising on and submitting an acceptable specimen showing the mark in actual use in commerce with the identified goods or services.
Disclaimers Adding a disclaimer of an unregistrable component of your mark when required by the examiner.
Color Claims and Description of the Mark Resolving issues with color claim language or the written description of the mark as submitted.
Claims of Prior Registration and Suspensions Responding to requests related to prior registrations you own or handling suspension-related correspondence.
Other Clarification Requests Any other non-substantive request from the examiner for clarification, correction, or additional information.

Substantive Office Action Response - $550

Substantive office actions raise legal objections that require a formal written argument from an attorney. Armani handles the following under the substantive response fee:

Likelihood of Confusion Refusal A legal argument addressing the DuPont factors to distinguish your mark from the cited mark and establish that confusion is unlikely in the relevant market.
Descriptiveness Refusal An argument that your mark is not merely descriptive of the goods or services, or evidence of acquired distinctiveness if the mark has been in long commercial use.
Surname Refusal A response to a refusal based on the mark being primarily merely a surname, including arguments regarding the mark's primary significance in the relevant market.
Other Substantive Refusals Substantive responses to other legal objections raised by the examiner. Armani reviews each situation and advises on the strength of the available arguments before proceeding.

Who It's For

Anyone with an open office action and a deadline approaching.

Office action response is available to anyone with a pending trademark application, regardless of how the original application was filed.

Self-filers who received an office action You filed your own application and the examiner sent back a response you do not know how to handle. Armani can step in at this stage.
Clients whose previous attorney dropped the ball Your application is in limbo because the attorney who filed it is no longer responding or declined to handle the office action. Armani can take over.
Founders facing a likelihood of confusion refusal The examiner cited a conflicting mark. A substantive response building a legal argument for why confusion is unlikely is your path to getting the application approved.
Anyone with a deadline approaching If you have an open office action with a three-month response window, time matters. Contact Armani as early as possible to allow time to prepare a strong response.

Process

From office action to response, step by step.

1
Submit the Intake Form

Complete the intake form for either procedural or substantive response. Include the date the office action was issued and your current application number so Armani can locate and review your file immediately.

2
Armani Reviews the Office Action

Armani reviews the office action, your original application, and the examiner's specific objections. For substantive refusals, she assesses the strength of the available arguments and advises on the realistic path forward before drafting begins.

3
Response is Drafted

For procedural responses, the necessary amendments and clarifications are drafted and prepared for submission. For substantive responses, a formal legal argument is built addressing the examiner's specific grounds for refusal.

4
Response is Filed with the USPTO

The completed response is submitted to the USPTO before the deadline. You receive confirmation of filing and Armani monitors the application for the examiner's follow-up action.

5
Examiner Review and Next Steps

The examiner reviews the response. If the refusal is overcome, the application moves forward to publication. If the examiner issues a final refusal, Armani advises on appeal options and next steps.

Pricing

Two flat fees. No surprises.

Procedural Office Action Response Non-Substantive Examiner Requests
$300 Flat attorney fee
Identification of goods and services amendments
Specimen of use submissions and corrections
Disclaimers, color claims, and description corrections
Suspension responses and other clarification requests
Substantive Office Action Response Legal Objections Requiring Attorney Argument
$550 Flat attorney fee
Likelihood of confusion refusals citing a blocking mark
Descriptiveness refusals and acquired distinctiveness arguments
Surname refusals and primary significance arguments
Other substantive legal objections at the examiner's discretion

USPTO fees: There is generally no government fee for filing an office action response. However, certain types of responses may require additional USPTO fees depending on the specific action taken. See the USPTO fee schedule for a complete list. Armani will advise if any additional fees apply to your specific situation before filing.

Get Started

Office action received? Start here.

Select the intake form that matches the type of office action you received. If you are not sure whether your office action is procedural or substantive, complete either form and Armani will confirm the type and applicable fee after reviewing your file.

Procedural Office Action

For non-substantive examiner requests: identification amendments, specimen issues, disclaimers, color claims, and other clarification requests.

Substantive Office Action

For legal objections: likelihood of confusion, descriptiveness refusals, surname refusals, and other substantive grounds for refusal.

FAQ

Questions about office action responses.

The office action itself will state the grounds for the examiner's refusal or request. Procedural actions typically ask you to amend something: your description of goods and services, your specimen, a disclaimer, or other administrative details. Substantive actions cite a legal basis for refusal, most commonly a likelihood of confusion with an existing registered mark, or a determination that your mark is merely descriptive. If you are unsure, submit either intake form and Armani will confirm the type after reviewing your application.

The standard response deadline is three months from the date the office action was issued. One three-month extension is available for a USPTO fee if more time is needed. If no response is filed by the final deadline, the application is considered abandoned and cannot be revived without a separate petition and additional fees. Do not wait until the last minute. Contact Armani as soon as you receive an office action to allow sufficient time to prepare a complete and well-reasoned response.

Yes. Armani can step in as attorney of record on any pending application, whether you filed it yourself, used a different attorney, or used a non-attorney filing service. She will review the full application history and the office action before advising on the best response strategy. If the original application has issues that complicate the response, she will flag those as well.

A final refusal is not the absolute end of the process. You have the option to appeal to the Trademark Trial and Appeal Board, or in some cases to request reconsideration from the examiner before appeal. The right path depends on the specific grounds for the final refusal and the strength of the available arguments. Armani advises on next steps if a final refusal is issued and can represent you in an appeal if the situation warrants it.

In most cases, no. There is generally no government fee required to file an office action response. However, certain types of responses may require additional USPTO fees depending on the specific action taken, such as adding a class of goods and services or requesting an extension of time. Armani will advise you on any additional fees that may apply to your specific situation before filing. You can also review the full USPTO fee schedule at uspto.gov for reference.

This is one of the most common situations Armani steps into. Non-attorney filing services can submit applications but cannot provide legal advice or draft substantive responses. A substantive refusal, particularly a likelihood of confusion refusal, requires a legal argument that addresses specific factors the USPTO examiner weighs. Attempting to respond without an attorney significantly reduces the chances of overcoming the refusal. Armani reviews the application, assesses the strength of the arguments available, and handles the full response from that point forward.

Act Before the Deadline

Your application is not lost yet. But the clock is running.

A USPTO office action is not a denial. It is a request that requires a timely, accurate response. Submit the intake form today so Armani has time to build the strongest possible response before your deadline.

Flat-fee pricing No hourly billing Direct attorney access Federal filings nationwide
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