Office actions

Drafting office action responses:

Pending and registered marks - TESS

To find examples of work by an attorney:

(first name)[AT] and (last name)[AT] and `FD > 20050000 <20110222

Note: to locate past filings under the USPTO's "free form" search, the backwards apostrophe

preceding the letters "FD" is underneath the tilde (~) on keyboards.

The above example will bring up a list of applications filed by an attorney between January 1, 2005 and February 22, 2011.

Successful office action responses:

example: FLICKR dots office action response (US Reg. No. 3743421) - issue overcome: does not function as a mark

example: Muir Beach Volunteer Firemen's Association (US Reg. No. 2094621) - issue overcome: proposed mark purely ornamental

example: 3-circle miscellaneous design - (US Reg No. 4937114) issue overcome: acceptable specimen for Class 16 information guide: response (retrieve evidence.pdf file at TSDR,

under "Response to Office Action" within Petition)

example: office action response for BLINK (Reg. No. 5022827)- issue overcome: acceptability of open source software specimen - response

This is an extremely thorough response which details the requirements for open source software specimens, and why the specimen submitted satisfies USPTO specimen requirements. The USPTO issued the BLINK registration on August 16, 2016.

Signing the office action response:

"Responses to Office actions must be properly signed. TMEP §712. If applicant is not represented by an attorney, the response must be signed by applicant or by someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq."

***

"The response filed on March 3, 2008 appears to have been signed by a person who does not have legal authority to bind or represent applicant. 37 C.F.R. §10.18(a); TMEP §§602 and 712. Therefore, the response is not accepted and the contents will not be reviewed."

Updated May 6, 2021