Assistance to respond to an office action in the EU and from the IPO
Has your trademark application in the EU, UK or US been rejected?
When you are applying for a trademark there is the possibility that the examiner issues an ‘office action’. Through this Office Action, they dismiss your trademark application. This can be done for various reasons and on various grounds, including for simple reasons such as name similarities to more complex issues.
Our team of IP lawyers take the time to understand your name and situation and will help you write and submit a well formulated response to an office action. This improves your chances of success of saving your trademark – and saving significant costs from a time and marketing perspective of having to change your name.
We have experience helping clients respond to ‘Office Actions’ or Trademark Application refusals across the globe including in the European Union.
Some of the issues that cause non-final office actions:
Administrative Errors: These types of errors are usually relatively easy to resolve and also quick. It may be as simple as updating or correcting the details of the owner or correcting any errors (typographical and so on) you may have made in the application process.
Lack of Distinctiveness: This is a clear and critical criteria in trademark applications. If your trademark is not distinctive there is a risk that it will be rejected. Our lawyers can work with you to try and find a solution. Usually this involves providing evidence to the examiner that your proposed trademark as acquired ‘distinctiveness through use’.
Possibility or likelihood of confusion: The examiner my refuse your trademark due to the possibility or likelihood of confusion with an existing trademark. Our trademark and IP lawyers in Greece, Europe, will help you navigate this by assessing and possibly amending the goods and services you propose to bid for or alternatively, working to create a coexistence agreement.
Talk to our legal team today about how we can help you respond to an office action.
How you are notified of an office action
The IPO (Intellectual Property Office) provides you with an official letter (email or on the platform). It will have a due date which you must respond by. You need to respond by the due date and engage our team of lawyers prior if you require assistance.
How you can respond to an office action
This really depends on the reason for the action / refusal. Sometimes, you can simply respond with a clarification letter and make an amendment. Other times, you need to put together information including a formal response and detailed evidence. Chat to our legal team for further guidance.
Does it cost money to respond to an office action? Do I need to pay a fee?
When you pay the trademark application fee, it covers the whole process including resolving any potential issues as part of an office action. Of course, there are costs in preparing a formal response if you engage us as well as hidden costs (such as your time spent responding to the office action).
