The benefits of using Trademark Office Action Response Templates
In working on a trademark office action response, it is extremely helpful to work off of response templates that have been filed by other attorneys. Especially if you have not previously drafted and filed office action responses, using templates will provide you with a good idea of the standard formats and style that are generally used in refusal responses. (You will notice that trademark responses do not require a particular format, but keeping with the more common format will make things easier for the trademark examiner.) Aside from getting a feel for the proper format, using office action response templates will often provide you with supporting case-law that you may be able to use to support your own arguments. So, for example, if your trademark was refused because it was confusingly similar to another pending or registered trademark, templates of other responses to the same type of refusal may be useful in putting together a strong argument in support of registration. If you are working off of a well-researched and drafted response template, you may be able to use some of the same arguments and cases that were used in those response samples.
Why is it difficult to find Office Action Response Templates?
Unlike many other official documents, which are readily available online, it is fairly difficult to find good trademark response templates and office action samples. There are several reasons for this. First, trademark Office Actions are not standard. What this means is that a trademark may be refused by the trademark office for many reasons. And the responses to trademark refusals necessarily will be responsive to the particular issue that the examiner raised in that Office Action. If your trademark is refused because of a 2(d) issue (Confusingly Similar Refusal), for example, it would not be helpful to review trademark response templates dealing with a 2(e) issue (merely descriptive refusal). This is because the arguments you would want to make to overcome a “confusingly similar” refusal would be very different to the arguments you would make if you were looking to overcome a “merely descriptive” refusal. Response templates are only helpful if you are able to locate templates that are specific the issue(s) in your trademark Office Action.
Second, while Office Actions and Office Action Responses are public records, the Trademark Office does not provide an easy way of searching trademarks or trademark responses. If you happen to know that a particular trademark had an Office Action issued against it and that a response was filed by the applicant, then you could look up that trademark and download all of the filings associated with that trademark (including the office action and the corresponding responses). But the Trademark Office does not provide a search engine for searching office actions or responses. You could not, for example, search for responses filed during the last month or for responses filed in connection with a confusingly similar refusal.
Where to find Office Response Templates
At ttabcenter.com, they have made the process of searching for USPTO office action response templates easy. Not only are you able to search generally for office action responses, you can also narrow your searches to specific types of refusals or issues. For example, you can search for only response samples dealing with a 2(d) (confusingly similar) issue. You can further narrow the searches and find only those responses that were successful in overcoming the examiner refusal. In addition, the trademark office action response search engine allows for advance searches with more fields and options.