How Much Does a Trademark Office Action Response Cost?
Short answer: at Harborage Law a trademark office action response is a flat $875 for a non-substantive office action and a flat $1,300 for a substantive refusal. The USPTO charges nothing to file the response itself. If you need more time, a three-month extension costs $125 in USPTO fees plus a $200 attorney fee. Those are the numbers. The rest of this article explains what they buy and when you should not spend them.
What an office action is
After you file a trademark application, a USPTO examining attorney reviews it. If the examiner finds a problem, the USPTO issues a letter called an office action that explains the problem and gives you a deadline to fix it. For applications examined since December 3, 2022, that deadline is three months from the issue date, with one three-month extension available for the $125 fee if you request it before the first deadline passes.
If nothing is filed by the deadline, the application is abandoned. That is the outcome to avoid, because reviving an abandoned application costs more than responding on time, and refiling means going to the back of the line.
Non-substantive versus substantive
The price depends on what the examiner raised, so it helps to know the two categories.
Non-substantive office actions, $875 flat
These are procedural or technical issues. Common examples include a request to disclaim a descriptive word in the mark, an amendment to the description of goods or services, a question about the applicant's legal entity, a request for a clearer specimen showing the mark in use, or a clarification of the mark's color or translation. They take care and precision, but they are not arguments about whether you are entitled to the mark.
Substantive refusals, $1,300 flat
These are the examiner's legal objections to registration. The two I see most are a likelihood of confusion refusal, where the examiner cites an existing registration or earlier application as too similar to yours, and a merely descriptive refusal, where the examiner says the mark simply describes the goods or services. Overcoming either one means a written legal brief with evidence and case law, and sometimes an amendment to the application or an argument for registration on the Supplemental Register.
An office action can combine both kinds of issues. When it does, I quote it as substantive and handle everything in the letter in one response.
Why quotes from other firms vary so much
Published attorney fees for office action responses run from a few hundred dollars for a minor fix to several thousand dollars for a contested refusal, and some filing services quote low prices that cover only the procedural category. When you compare quotes, ask three questions: does the price cover a substantive refusal, does it include the evidence gathering that a likelihood of confusion argument requires, and is it flat or hourly. Hourly billing on a substantive response can climb quickly, which is why I price these as flat fees.
What is included in my flat fee
Reading the office action and the examiner's evidence, and a plain-language explanation to you of what was raised and how strong it is.
A recommendation on the response strategy, including whether an amendment, an argument, or both makes sense.
Drafting and filing the response with the USPTO, including any declarations and evidence.
Monitoring for the examiner's next action and telling you what it means.
Each office action is priced on its own, since a later action can raise different issues. The $150 engagement retainer is paid once per client and credited toward the fee, and the balance can be spread into monthly payments.
When I tell clients not to respond
Sometimes the honest advice is to let the application go. If the examiner cites a well-established mark that is very close to yours for the same goods, the odds of overcoming the refusal may be low, and the money is better spent on a name you can actually own. The same is true when a mark is clearly descriptive and the business has not been using it long enough to build the kind of recognition that could support registration. I would rather tell you that up front than bill you for a response that is unlikely to succeed.
The deadlines, in one place
Response due: three months from the office action issue date.
Extension: one three-month extension, requested before the first deadline, $125 USPTO fee.
Missed deadline: application abandoned. Petition to revive for unintentional delay within two months of the notice of abandonment, $150 USPTO fee, $450 attorney fee.
Trademark work is federal, so I handle office action responses for applicants anywhere in the United States. You can read more on my office action response page, and if you are still deciding whether to file at all, start with trademark registration.
Frequently asked questions
Is there a USPTO fee to respond to a trademark office action?
No. The USPTO does not charge a fee to file a response to an office action. The only government fee that commonly comes up is the $125 fee for a three-month extension of time, which must be requested before the original three-month deadline passes.
What happens if I miss the office action deadline?
The USPTO abandons the application. If the delay was unintentional, a petition to revive can be filed within two months of the notice of abandonment, with a $150 USPTO fee. My attorney fee for a petition to revive is $450, so missing the deadline roughly doubles the cost of the response.
Can I respond to a trademark office action myself?
Applicants who live in the United States can respond on their own. The risk is that a response to a substantive refusal is a legal argument, and an unpersuasive one can push the application to a final refusal, which is harder and more expensive to overcome. Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney.
Talk it through, no charge
If you have an office action in hand, send it over. I will read it and tell you which category it falls in, what I think the chances are, and what it would cost, before you decide anything. You can book a free consultation or call (860) 834-1582, and there is no obligation to hire me afterward.
This article is general information about United States trademark, copyright, and Connecticut contract law. It is not legal advice, and reading it does not create an attorney-client relationship. Your situation may differ, so please talk with an attorney before acting on anything here.
