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I will file responses to office actions from US trademark office
Experienced Trademark Attorney Who Knows What He is Doing
28 years experience and expertise as a Trademark Examining Attorney at the U.S. Trademark Office. I have reviewed and made decisions on over 50,000 trademark applications so I know what it takes to ge...
Level 2
Has met high performance criteria and has a proven track record for meeting client expectations.
About this Gig
If you got an Office Action relating to substantive refusals and/or procedural issues. I will respond to the OA and resolve these issues. I was previously a trademark examining attorney and supervisory attorney at the USPTO for over 28 years so I know how to resolve these issues and understand what arguments will work. There is no guarantee that substantive refusals will be withdrawn but I will give you the best chance to persuade the examiner to withdraw the refusal.
Procedural issues such as disclaimers, identification, and entity type can usually can be resolved. The USPTO has a 3000 page book of rules [the TMEP] and I have read every page a number of times.
Substantive refusals may be overcomed depending on the nature of the refusal. An effective response requires knowing the relevant laws and cases, crafting an argument, attaching evidence, and possibly amending the application to change the analysis.
You can try to do it yourself but an experienced trademark attorney will do a much better job and increase your chances of resolving the requirements and overcoming the refusal.
The fee covers a single response to an Office Action. Additional responses are extra.
Filing type:
Trademark
Target country:
United States
Legal consulting Gigs are not screened
Please note that there is no screening process for this service. We recommend that you message the freelancer and check all necessary details before placing your order. Pro freelancers in this category have gone through a vetting process. You can find more details here.
FAQ
What is the difference between a standard refusal and a complex refusal?
The time it takes to draft a response to the Office Action. Some refusals just take longer to draft a response due to the issues involved. I can let you know the complexity of the refusal if you give me the serial number of the application.
Can you guarantee that the refusal can be overcome and the application will be approved?
No, no attorney can guarantee results. I can only promise that I will do the best job that I can to give the best chance of overcoming the refusal. I previously worked as a trademark examining attorney in the Trademark Office for over 25 years so I know what arguments work and don't work.
What are common procedural issues in a trademark office action?
Correcting the identification of goods or services, requiring a new specimen, clarification of your entity type, and a requirement for a disclaimer of descriptive wording in the mark are the most common procedural issues. All these issues can be resolved by filing a response to the Office Action.
When is a second response needed?
The Office Action may be followed by a Final Office Action. The examiner will explain why the response is not sufficient. You can respond a second response to try to rebut the Final Refusal. There is an additional fee for an addiitional response to address the Final Office Action.
What will the fee cover for responding to a substantive refusal?
I will respond to the Office Action with arguments against the refusal, case law and supporting evidence if applicable. The fee covers one response to the OA. It would not cover an additional response to any Final Office Action. That is a separate fee.
What if the Office Action contains a refusal and procedural issues?
The standard package would cover responding to the refusal and up to three procedural issues. In most cases, the procedural issues will be resolved by the response. The refusal may or may not be withdrawn depending on the circumstances. Not all refusals can be overcomed.
After you respond to my Office Action, do you continue to be my attorney?
Yes, I remain the attorney of record on your application until you file a form to remove me as your attorney. If there are additional matters on your application, I will reach out to you and let me know what needs to be done and the fee. You can always change attorneys in the future.
Are you a licensed attorney in the United States?
Yes, I am a licensed attorney in the State of New York in the United States. I have been a licensed attorney in the USA for over 35 years. I previously worked as an examining attorney at the USPTO.
How much will it cost to respond to a second Final Office Action?
The cost depends on the complexity of the case. It can range from $300 to $600. I will give you an estimate and your chances of winning prior to drafting the response and you can decide what you would like to do.
What if I already have an attorney?
If you already have an attorney, a Change of Attorney form would need to be filed and signed by you. There is an additional fee of $100 to file the form on your behalf.
Reviews
17 reviews for this Gig
| (14) | ||
| (3) | ||
| (0) | ||
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Rating Breakdown
- Seller communication level
- Quality of delivery
- Value of delivery
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Most relevant
S snakeg117
United States
A great person for the job knows exactly what you need and how to get the job done right the first time I give Douglas Lee five stars across the border.
$200-$400
Price
13 days
Duration
Helpful?R 
royaltylimo
United States
Experience Matters. He is the Subject Matter Expert, Trust is the Key.
$200-$400
Price
2 days
Duration
Helpful?M matt_belford66
Spain
Profesional
$200-$400
Price
9 days
Duration
Helpful?W webigo
Repeat Client
Germany
Douglas was a pleasure to work with.
$400-$600
Price
2 days
Duration
Helpful?P pockyrainny5
Thailand
Professionalism of work, Quick responsiveness, and Went above and beyond.
$100-$200
Price
4 days
Duration
Helpful?
Reviews
17 reviews for this Gig
| (14) | ||
| (3) | ||
| (0) | ||
| (0) | ||
| (0) |
Rating Breakdown
- Seller communication level
- Quality of delivery
- Value of delivery
Sort By
Most relevant
S snakeg117
United States
A great person for the job knows exactly what you need and how to get the job done right the first time I give Douglas Lee five stars across the border.
$200-$400
Price
13 days
Duration
Helpful?R royaltylimo
United States
Experience Matters. He is the Subject Matter Expert, Trust is the Key.
$200-$400
Price
2 days
Duration
Helpful?M matt_belford66
Spain
Profesional
$200-$400
Price
9 days
Duration
Helpful?W webigo
Repeat Client
Germany
Douglas was a pleasure to work with.
$400-$600
Price
2 days
Duration
Helpful?P pockyrainny5
Thailand
Professionalism of work, Quick responsiveness, and Went above and beyond.
$100-$200
Price
4 days
Duration
Helpful?
