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The Zest

My LegalZoom trademark got an Office Action. Now what?

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Start with the deadline: for most applications, the USPTO gives you three months from the date on the Office Action to respond, with one three-month extension available for a fee. Then work out whether the problem is procedural or substantive, because that decides whether your LegalZoom package covers it.

An Office Action isn't a final rejection. It's a letter from the USPTO's examining attorney explaining what has to change, or what has to be argued, before the mark can move forward. Plenty of applications get one. What you can't do is let it sit.

First, find your deadline

Open the Office Action and find the issue date at the top. The USPTO's current guidance says it must receive your response within three months of the date in the heading of its email notice. You can request one three-month extension, and the fee for that has been $125. Some actions set a different period, so read yours.

One caution. LegalZoom's own Office Action page says you "typically have six months." That was the rule until the USPTO shortened it in December 2022. Go by the USPTO's page and the date on your letter, not by any company's summary, mine included.

If the deadline passes with no response, the USPTO declares the application abandoned.

Procedural or substantive?

Read the reasons in the letter. They usually fall into one of two kinds.

Procedural problems are about the paperwork: a disclaimer of a generic word, a clearer description of goods, a mark description that needs amending, a specimen the examiner can't accept. These are fixed with amendments or substitutes.

Substantive refusals are about whether the mark can be registered at all: likelihood of confusion with another mark, or a finding that the name is descriptive, a surname or merely ornamental. These take a written legal argument, often with evidence.

A single Office Action can contain both. The article on Office Action responses walks through the common ones.

What your LegalZoom package covers

LegalZoom's Premium Trademark Registration includes "Response for minor procedural office actions." The footnote defines those as responses "to satisfy a disclaimer requirement or to amend a mark description," and says LZ Legal Services "may choose, at its sole discretion," to respond to certain ones.

So here's what to do:

  1. Contact LZ Legal Services right away and ask whether they'll respond to yours under your package. Get the answer in writing, with the date they'll file.
  2. If it's covered, ask to see the response before it's filed. You're the applicant. You should know what's being said for you.
  3. If it isn't covered, ask for the price and what the response will argue.

LegalZoom's comparison article says you "may still have to pay additional fees if your trademark has a complex office action."

What LegalZoom charges for the rest

LegalZoom's Office Action pricing page lists four tiers, "subject to change based on attorney evaluation":

  • Simple responses, such as agreeing to a disclaimer or substituting a specimen: $199
  • Moderate responses, such as an ornamental refusal: $399
  • Complex responses, such as descriptiveness or surname refusals: $599
  • Likelihood of confusion: $799 for one cited mark, plus $99 for each additional cited mark

LegalZoom's Office Action service page says it's "Available for Business Advisory Plan Customers Only," and describes the attorney as "an independent attorney." I couldn't confirm from LegalZoom's pages how that interacts with a registration you bought separately. Ask who'll be writing the response: the LZ Legal Services attorney who filed, or someone new.

You can hire a different attorney

You're not locked in. The application belongs to you, not to the company that filed it.

The USPTO has a free form, Change Address or Representation, that you can use to revoke the current attorney and appoint a new one. The USPTO says the owner signs it, either you or someone with authority to bind your company, and that neither the old attorney nor the new one can sign the revocation for you. Once it's accepted, the USPTO sends correspondence to the new attorney.

Do this early, not in the last week. A new attorney needs time to read your file, the cited marks and the record before writing a response.

How reliable is LegalZoom for trademark registration? I don't want to lose my application

Here's my honest answer. LZ Legal Services is a licensed law firm, and the attorneys there do this work every day. An Office Action doesn't mean anyone did something wrong. Examiners issue them on good applications all the time.

The way applications actually get lost is a missed deadline. So the most important thing you can do this week is put the response date on your calendar, get a clear yes or no from LZ Legal Services about coverage, and if the answer is no or slow, find someone who'll commit to a date.

It's also worth knowing what the research says about representation at this stage. A study by Deborah Gerhardt and Jon McClanahan found that counsel was associated with overcoming Office Actions and oppositions, and that about 82% of attorney-filed applications reached publication against about 60% of others. You already have an attorney-filed application. The question now is whether the person answering this letter has the time and scope to argue it properly.

If you want a second opinion

I answer Office Actions on applications filed elsewhere, including LegalZoom filings. Procedural responses start at $425. Substantive responses start at $1,600. I read the Office Action, the cited marks and your file first, and quote a flat fee before any work starts. One attorney does all of it. The details are on the Office Action response page.

If you'd like me to look at yours, start here.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

When you are ready to own it

One mark. One flat fee. One attorney.

The search, the written opinion, the federal application and procedural Office Actions, for $2,600 or three payments of $950. Nothing is filed until you approve the search. If I call your mark low risk and the USPTO refuses it, I file again at no attorney fee.

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