Using Office Action Response Templates to Respond to Substantive Refusals

When I began my legal career as a trademark attorney, you couldn’t apply for a trademark online through the United States Patent and Trademark Office’s (“USPTO”) website. No one knew what the hell TEAS was because it didn’t exist yet. Ahh … ’twas a simpler time. I prepared my office action responses in my word processor, printed them out, and filed the responses in paper through Certified Mail or Express Mail (which I believe the U.S. Post Office has done away with). The resulting work product resembled a legal brief.

Today, everything is done online. The USPTO’s TEAS—Trademark Electronic Application System—dominates. And it’s not even close. Maybe it’s because there’s so many TEASes to choose from: TEAS, TEAS RF, and TEAS Plus. In the first quarter of 2015, there were 10,424 TEAS applications filed, 63,764 TEAS RF applications filed, and 47,418 TEAS Plus applications filed. Guess how many applications were filed by paper? 475. Of course, this makes perfect sense—there’s really no good reason to file by paper. TEAS is cheaper, easier, immediate.

Of course, filing through TEAS means that you have to use the online TEAS form for your response. That’s fine for the rinky-dink stuff like tweaking identifications, entering a disclaimer, or correcting a mark description. But what about responding to a meaty substantive likelihood of confusion or descriptiveness refusal? I don’t really like typing that kind of response into TEAS’ boring little argument box.

TEAS boring argument box

Nope, I want to keep using my office action response templates that I’ve always used. Office action responses that look like this: Old School Office Action Response. With formatting, headings, charts, legal citations, and so on. So I still do. I prepare the response in Word, convert it to a pdf, and attach it to the evidence section. The USPTO allows this. In fact, when you get to the argument section, the USPTO explicitly gives you this option.

TEAS argument in evidence

So when I click on the button that says “Click here to Enter Argument(s),” I just enter this phrase in the box: “See argument contained in document attached in the evidence section.”

Picture of Office Action Argument Box

Then I go and attach the pdf in the evidence section. For my description of the evidence, I write “an office action response.” And that’s it.

I do want to make it clear that I do this for my responses to substantive refusals. If I’m dealing with disclaimers or identifications or any other non-substantive refusal, I use the appropriate parts of the form. In fact, even if I address those issues in my office action response attached as a pdf, I still fill out the appropriate portions of the TEAS form for those non-substantive issues.

Of course, this is all personal preference. Each attorney has his or her own style and preferences. There are plenty of people who simply type out the response in the argument box. And that’s completely fine. I just think providing the Examining Attorney with a brief-like document conveys a little more weight and care. For now, that’s my process.

If you want to do the same and need an office action response template in Word format, you can get it by click on the button below.

Click Here For My Word Version of a Trademark Office Action Response Template

About the Author

Bruno Tarabichi

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