Virtually every business could benefit  from a trademark!

According to a 2013 report by the USPTO, trademarks cover a broader set of participants in the economy  [than patents] because almost every firm, regardless of size, market, or business strategy, has goodwill to protect. (The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013)

Need a Trademark Attorney or Patent Attorney for working with the USPTO?

Getting the right help can mean better results: Facts Matter and being able to apply the law to the facts is something that is very important in the trademark and patent field. Unfortunately many  applicants (and their attorneys) have trouble and nearly half of trademark and patent applications end up going abandoned! Not Just Patents® Legal Services has an excellent record for working with the USPTO. We can help you with a Stand-up Trademark; Responses to Office Action; File or Defend a Trademark Opposition or Cancellation; Patent or Trademark Searches and Applications. We also Send or Respond to Cease and Desist Letters (these are not a USPTO activity ).

Congratulations to one of our Michigan clients for an April 2, 2013 patent grant with no office actions (no rejections).

US 8,408,564 Refuse and Recycling Cart

(Past performance is no guarantee of future results)

According to the AIPLA Report of the Economic Survey 2009, on average, law firms charge $1,440 to perform a trademark clearance search, analysis, and opinion, $867 to prepare and file a trademark application, and $1,678 for prosecution of a trademark registration.  A Not Just Patents Five Step Verification, application, and prosecution by Not Just Patents® Legal Services usually costs less than even one of these fees and we have a high success rate. Our trademark goals are to register strong trademarks, have long term clients, repeat business, and good referrals. Help us to meet our goals and we can help you to meet yours.

Why Do Facts Matter? Why Should A Trademark Application Be Rights and Fact Based Instead of Form Based?

Facts Matter. Whether a Trademark Application is strong enough to support a Trademark Registration and whether the registered trademark is a strong trademark is a question of fact decided by the USPTO on a case-by-case basis. Deciding the best strategy for applying for a trademark depends on the facts. Forms can be helpful devices to gather standard information but do not take into account the law & rights behind federal registration of a trademark.

A broad goods/services identification can limit the access of a competitor to the trademark register, experience and strategy and facts can really make a difference. Having too broad of a goods/services identification can lead to an unnecessary refusal or costly litigation, sometimes narrow is better. Having the best strategic ID is not something that jumps out of a form and someone without both application experience and TTAB experience may not use trademark law to the best strategic advantage.

The great variation in facts from trademark to trademark prevents the formulation of specific rules for specific fact situations. Each trademark application is decided on its own merits and understanding strategy can lead to stronger rights.


We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1. Verify Inherent Strength

Does the mark consist of inherently distinctive element(s) that can be claimed for exclusive use?

2. Verify Right to Use

Does the mark have a likelihood of confusion with prior marks (registered or unregistered)?

 3. Verify Right to Register

Does the mark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Verify Specimen

Is the mark used as a trademark or service mark in the specimen?

5. Verify Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

Get a Stand Up Trademark: A registration that protects legal rights and sets the ground work for a strong trademark registration protects investments in a product or service that can last through a long product life.

 What are Office Actions and How to Respond to an Office Action from the USPTO

Office Actions

Office actions are first action correspondences from the assigned USPTO  trademark examiner that set forth the legal status of a trademark application if the trademark application does NOT meet registration requirements.

There are several types of office actions:

1. Examiner’s amendments;

2. Priority actions;

3. Office actions (non-final and final); and

4. Suspension letters.

Note: If the trademark DOES meet registration requirements, the first action of the USPTO (the ‘TRAM Snapshot of App at Pub for Oppostn’) may go unnoticed by the applicant until the applicant receives a postcard or email of the ‘Notice of Publication.’

Types of Office Actions



   1. Examiner’s Amendment

      An examiner’s amendment is a written confirmation of an amendment made to an application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.


   2. Priority Action

      A priority action is a letter [electronic] in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant’s attorney. Unlike an examiner’s amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding.

      The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing.


 3. Office Action

      An office action is a letter in which an examining attorney sets forth the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.

      Applicants must respond to an office action within 6 months from the date the office action is mailed. If applicants fail to do so, their applications will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      There are two types of office actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only response to a final office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.


  4. Suspension letters

      A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application]. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.

 How to Respond to Office Actions

There is no set form or required format for responding to an office action. Applicants should address each issue raised by the examining attorney.

Responses to office actions must be received within 6 months from the mailing date on the office action. There are no extensions to this deadline. Examining attorneys have no discretion to extend the time period for filing. If applicants do not submit a timely response to an office action, their applications will be declared abandoned.

Not Just Patents®Legal Services can respond to office actions and advise you on how to use trademarks to capture more rights. For more information, see Office Actions or call us at (651) 500-7590. See Why Not Just Patents? if you have already applied and been refused.

Why Do Facts Matter? What is a Broad Patent?

‘Broad’ in patent terms generally refers to the scope of the claims of a patent, the part of the patent application that describes the legal bounds of the invention.

A patent that claims and discloses an invention with a broad scope has few limitations rather than a narrow patent that has a limited narrow scope. A broad patent may claim the inventive step or inventive concept and use a number of implementations or embodiments of the inventive concept  to illustrate the concept rather than a patent that merely describes a prototype’s construction (narrow). The benefit of a broad patent is that it is a bigger piece of intellectual property, worth more both to the inventor and to potential licensees (that are more willing to pay the inventor because they are getting more) because it is more difficult to “design around.”

The USPTO has issued a new Nonprovisional (Utility) Patent Application Filing Guide that incorporates and strongly encourages electronic filing. (The USPTO now charges substantially more for applications submitted on paper.)

Is your invention strong enough to patent? Is your patent application strong enough to support your invention?

Whether an Invention and its Patent Application are strong and complete enough to support an Issued Patent is a question of fact and is decided by the USPTO on a case-by-case basis.

There are many grounds that a patent may be refused on, the two big categories being the invention itself (subject matter eligibility, utility, novelty, obviousness-these are why you do a good patent search) and does the patent application itself meet its requirements under 35 U.S.C. 112 (Description, Enablement, Best Mode, Claims defining applicant's inventions, Definiteness, Further Limiting-these are why the application must be well written). Examples of Enablement Requirement

Examples of Description Requirement

Examples of Best Mode Requirement

Once the application is filed, a patent examiner determines whether the claimed invention meets certain statutory requirements such as novelty, nonobviousness, and definiteness, among others. See [35 U.S.C.] §§ 102, 103, 112. If an application fails to meet these demands, the examiner will issue an "Office Action" containing the grounds for rejection. [35 U.S.C.] §§ 131, 132(a). Upon receiving an Office Action, an applicant may amend his claims, argue against the rejection, or present evidence showing why the invention is patentable. 37 C.F.R. § 1.111 (2006). The patent examiner must then respond by either allowing some or all of the claims or by issuing another rejection. 35 U.S.C. § 151. This back-and-forth exchange between an applicant and an examiner is commonly referred to as the "prosecution" of an application. Tafas v. Dudas, 541 F. Supp. 2d 805 - Dist. Court, ED Virginia, Alexandria Div. 2008.

Will a patent search and patent application that were created by a form filling service stand up to a factual analysis of whether or not the patent application can stand up to prosecution?

Submitting a strong fact-based patent application leads to better results. If you have already received an office action, we can help.

Patent Applications

What are Office Actions and How to Respond to an Office Action from the USPTO

Office Actions [Step 10 from the Process for Obtaining a Utility Patent]

( some sections are excerpts from

The applicant is notified in writing of the examiner's decision by an Office “action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner; relatively few applications are allowed as filed.


37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.

(a) (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.

(2) Supplemental replies.

 (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner suggestion(s);

(C) Placement of the application in condition for allowance;

(D) Reply to an Office requirement made after the first reply was filed;

(E) Correction of informalities (e.g., typographical errors); or

(F) Simplification of issues for appeal.

(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

Not Just Patents® Legal Services can respond to your office actions on your behalf. For more information, see Office Actions or call us at (651) 500-7590.

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