Why is the price difference three times in response to the US trademark OA? Lawyer Shen Jinlong dissects the key links between objections and invalidity, and what are the qualifications of the agency to consider

The response from the US trademark OA ranges from several thousand to tens of thousands of quotes, with a difference of three times being normal, but it is important to clarify where the difference lies. The core difference lies not in the word count of the document, but in two things: first, whether the agency has US professional qualifications and directly connects with USPTO; second, whether the response is a template or a chain of evidence for each rejection reason. If there are objections or invalid procedures in the review comments, the quotation will be raised another level. Below, we will break down the actual case handling process.

First, distinguish whether you have received review opinions, objections, or invalidity

Many customers panic when they encounter it for the first time and call any document sent by USPTO "OA". Actually, the path is completely different. Office Action is a unilateral opinion issued by the examiner, commonly based on approximate confusion and descriptive rejection under 15 USC § 1052. The response window is generally 3 months from the date of issuance, and can be extended once to 6 months for a fee. And opposition is a third-party adversarial procedure filed with the Trademark Trial and Appeal Board (TTAB) within 30 days of the announcement period, and the defense period is usually only about 40 days. Cancellation refers to the revocation process initiated against a registered trademark. The cost structure, evidence requirements, and timeline of the three are different, and using the same quotation to cover them is itself a risk signal.

The response deadline is only 3 months, it can be extended but it will cost money

The 3-month review period is a hard deadline, and the extension is not free. Submitting an extension request to USPTO requires payment of official fees, and the extension is only given one opportunity, which will enter the Abandoned state upon completion. In practice, we usually recommend that clients hand over the case clearly within two weeks after receiving the documents, as the time involved in foreign lawyer's delegation, evidence collection, and notarization and authentication are all included. Cross border e-commerce sellers should be particularly aware that USPTO's electronic system only recognizes signatures submitted by licensed lawyers in the United States, and non US practitioners cannot directly submit them. This layer of transfer itself consumes time. If the agency doesn't even explain this layer clearly, even if the quote is low, it should be cautious.

The quotation difference is three times, the difference lies in the US lawyer fees and response strategy

The cost of a US trademark OA response roughly consists of three parts: the labor costs of US practicing lawyers, the preparation costs of evidence materials, and the complexity of the response strategy. Template based response - only changing the product description without providing evidence - with fewer working hours, the quotation will naturally be lower. However, when encountering confusion rejection under 15 USC § 1052 (d), it is often necessary to submit coexistence agreements, prior use evidence, market differentiation arguments, and even synchronize the status of the other party's trademark, which cannot be solved by a single template. We have seen quotes so low that they only cover the submission action, and we have also seen quotes so high that they package unnecessary programs. The criterion for judgment is not the price, but whether the quotation clearly states how to respond to each rejection reason. To understand the overall framework for handling cross-border trademarks, you can first take a lookUS and EU Intellectual Property PracticeIntroduction to.

Why are objections and invalidity priced separately? Because it is a litigation procedure

The objection and invalidation procedures of TTAB have quasi judicial nature, including discovery of evidence, inquiry letter, admission testimony, court statements, etc. The cycle is usually 12 to 24 months, and the cost is much higher than that of ordinary review opinions. In such programs, the participation of American lawyers is essential, and the quotation is naturally not on the same level as a simple OA response. Many institutions accept objections and defenses as OA quotations, only to discover that they need to enter the evidence stage midway and then temporarily increase prices, resulting in poor customer experience. Before signing the contract, it is crucial to clarify which program node the quotation covers and whether it includes the TTAB stage fees, in order to avoid disputes in the later stages. The adversarial procedures involving other jurisdictions such as the European Union and Japan have similar logic and can refer to intellectual property legal services in other countries.

Agency qualifications, focus on these four aspects

Firstly, is there a USPTO accredited US practicing lawyer who directly signs and submits the application, rather than subcontracting it layer by layer. Secondly, is the breakdown of official and legal fees listed in the quotation? USPTO's official fees are traceable, and mixing them together in the quotation can easily hide moisture. Thirdly, whether there is practical experience in TTAB procedures, objections and invalidity are not something that ordinary trademark agents can handle. Fourthly, can the domestic team explain each rejection reason clearly in Chinese instead of forwarding the English opinions of American lawyers as they are. Among these four items, the first one is the bottom line, without which the last three items cannot be discussed. The lawyer background of our foreign-related team can be found atShen Jinlong LawyerView the introduction page.

The more evidence, the better. We need to confront the reasons for rejection

The direction of evidence for descriptive rejection and confusing rejection is completely different. The former requires proof that the trademark has acquired distinctiveness through use, usually in accordance with 15 USC § 1052 (f), and requires submission of evidence of continuous use, sales revenue, advertising investment, and consumer awareness materials for five years. The latter requires proof that two trademarks coexist in the market without confusion, with the focus of evidence being differences in product categories, sales channels, and consumer groups. In practice, we generally recommend conducting a round of evidence inventory before quoting, as the amount of evidence directly determines the working hours. Some customers already have Amazon backend data and independent website traffic records in their hands, which can be quickly organized; Some customers have nothing and have to make up for it from scratch, so the cost naturally varies. The logic of evidence preparation for overseas intellectual property rights is more systematically explained in the overseas intellectual property sector.

What are the real risks of low price responses

The most direct risk is missing the deadline, resulting in the abandonment of the trademark. Re application will require another round of examination, and previous application dates and priority rights may be completely invalidated. The second level of risk is that the response content leaves unfavorable records, such as narrow modifications to the product description, resulting in a reduction in the scope of protection during subsequent rights protection. The third layer is that if there is an objection and it is handled according to ordinary OA, the program will directly lose its rights. The cost of remedying these consequences is usually much higher than the agency fees saved initially. So when the price difference is three times, don't rush to choose the cheaper one first. Ask clearly where the cheaper and expensive ones are before making a decision.

Several questions to be asked clearly before signing the contract

Who is a practicing lawyer in the United States, and is the signature signed by him/her; The quotation does not include official fees or extension fees; Which program node is covered and is the TTAB stage counted separately; Who is responsible for organizing the evidence materials and how will the excess be charged; Will there be additional charges after the response is rejected twice. Writing these questions into the commission contract is much more useful than arguing about the reasonableness of the quotation afterwards. The essence of the US Trademark Office's response to this matter is to buy an predictable processing path, rather than buying the cheapest document.

This article was written by Lawyer Shen Jinlong from the foreign-related intellectual property team of Guangdong Zhiming Law Firm. The team has been handling trademark and patent copyright business in the United States and the European Union for a long time. If assistance is needed, please call the hotline at 0755-25986969.

Disclaimer: The content of this article is based on current trademark laws, regulations, and practical experience in the United States, and is for general reference only. It does not constitute legal advice on any specific case. The examination results of trademark cases are influenced by specific facts, evidence, and the discretion of the examiner. The handling of individual cases should be based on the formal opinions of professional lawyers.