How can I overcome a substantive office action?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

In general, the most common strategies for overcoming a substantive trademark office action include:

  • Amending the application depending on the examiner's suggestions, such as revising your list of goods and services,
  • Responding to the office action and provide legal arguments and evidence supporting your claim, such as rebutting the examiner's concerns about your mark's lack of distinctiveness,
  • Reaching out to third parties if their consent for the use of your mark is needed,
  • Filing an appeal request with the TTAB, a higher authority within the USPTO.

However, this is a very general answer, and if you've received a substantive office action, your options will depend on the actual reason your trademark got dismissed. If the problem lies in your mark being similar to an already registered trademark, your options will differ from someone who has, for example, received an office action because their mark includes a flag, although both are substantive reasons for dismissal.

Therefore, if you've received a substantive office action, it's advisable to consult an experienced trademark attorney, who can walk you through its contents, discuss your options with you, and take appropriate steps to save your trademark.

Advice icon

Haven't found what you are looking for?

Our team of experienced trademark attorneys is here to help you! Simply send us an email outlining your request and we'll be happy to assist you.