How to Reply to USPTO Office Action | Tutorial | Follow Along | Trademarks

Follow along with me as I file a reply to the USPTO Office action, where they objected to my trademark application based on a disclaimer requirement.
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Legal Disclosure: I am licensed to practice in the state of California and before the United States Patent and Trademark Office. Information contained in this video is not legal advice - please seek advice of counsel. This video and description may contain attorney advertising.
Disclosure: My videos may contain reviews, recommendations, testimonials, or endorsements of other businesses, individuals, events, materials (such as books), products, services, or websites. At this time I do not receive any monetary compensation or affiliate revenue for such content. I occasionally receive free access to a service, product, or program in order to provide a review; if so, I will clearly disclose this in the video.
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Comment policy: I reserve the right to delete comments and block anyone from the channel due to threats, hostility, or spam.

[@lavenderbookco]

Thank you so much! I have been doing this all myself to save as much money as possible and you were simply wonderful. Clear, straight to the point, explained where necessary 👏🏼🙌🏼 I was stressing so bad and now it’s submitted!

[@GeorgeLev-yl8hz]

Thank you , Thank you SO MUCH!!! Love you !!!! My attorney wanted me to pay another $300 to do this. I found your page by accident while checking on the status of my application. You got a subscriber.! God bless you!

[@davidjames9148]

OMG, thank you so much. Many years ago I tried for a trademark on another biz and got the office action and I could not understand it, so I let it go. With my new biz, I got the same letter and followed your video. It is the best.

[@ElizabethPW]

Glad it helped!

[@michaelolson571]

Elizabeth, you're amazing! Thank you for helping out with this and other issues I've encountered in the process.

[@CraftingwithDelonda]

This is literally the best video on TH-cam about how to respond. Thank you so much for doing this. I cannot thank you enough. I am going to attempt to tackle this myself because the spam from all of the attorneys is a bit much.

[@ElizabethPW]

Great to hear!

[@rainmaker2635]

appreciate your info here too!!!!

[@webbietrilltresavagefather5647]

Thank You for your help.

[@edwin4706]

Very helpful video, thanks!

[@user-sm3nm7yn7p]

Appreciate your information, as always!

[@ElizabethPW]

Great to hear!

[@TamaraBasicTease]

Thank you for your help! I tried to hire someone for my Specimen Refusal. Instead he gave me free legal advice and told me to finish it myself. Thanks again 😁

[@ElizabethPW]

Best of luck!

[@dagobertovargas8179]

Thanks for your help Elizabeth!😀

[@ElizabethPW]

You are so welcome!

[@lauraarroyave8652]

This was so helpful, thabk you!

[@PlanetRoq]

THANK YOU!! Exactly what I needed.

[@ElizabethPW]

Great to hear!

[@JuandeSouza]

Amazing video! Thank you so much for your video!

[@ElizabethPW]

Glad you liked it!

[@cameryncarpenter6874]

You’re amazing! Thank you!

[@ElizabethPW]

You're so welcome!

[@nakemo2]

Thank you so much for this video ❤

[@ElizabethPW]

You’re welcome!

[@tayyarkiziltepe]

Thank you! your tutorial solved my issue..

[@ElizabethPW]

Glad it helped

[@EnergyCenterDotTV]

Was just thinking about you today. Hope you and yours are good.

[@ElizabethPW]

thanks, yes, you too!

[@chaptersev7enstudios]

Thank you so much, I was about to give in to a lawyer then you showed up. My hero lol

[@ElizabethPW]

glad it helped!

[@mudasiraryan2140]

thanks so mush

[@ElizabethPW]

Welcome

[@isabellesebastiansadventur1858]

I got all the crazy emails and calls too

[@ElizabethPW]

Yep so annoying!

[@person5110]

I can’t even find the real USPTO email because of how much spam I’ve received. Ridiculous

[@isabellesebastiansadventur1858]

@@person5110just type uspto and it should pop up

[@isabellesebastiansadventur1858]

@@ElizabethPW my class action says completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a),
2.65(a); TMEP §§711, 718.03. Should I hire a lawyer? I prefer to respond myself if I can

[@mfarooqiqbal]

Appreciate your informative video. Very nice. Is it necessary to hire attorney for non-US domiciled in any case?

[@ElizabethPW]

Yes

[@harttwinz]

Hi Elizabeth. Great video. We received an office action for our trademark name Hart Twinz and the summary of issues are consent and primarily merely a surname. I have a question, what statement do we need to show and for the written consent, do we write our name and signature?

[@ElizabethPW]

Yes it is very simple, you just make a paper where you state that you give yourself permission to use your name, and sign/date it. It's strange but simple.

[@harttwinz]

@@ElizabethPW wow thank you so much Elizabeth. I really appreciate you. I submitted ours thanks to your tutorial of this video ❤️

[@enekneya7378]

Great info and explanation! In your example, when you respond, is it possible you could receive another Office Action for an unrelated matter/issue?

[@ElizabethPW]

In theory but that's unusual.

[@enekneya7378]

​@ElizabethPW @8:55 Would Nike have disclaimed all 3 words "Just Do It"?

[@italovolpe8635]

Hello, Elizabeth,
Thanks for your tutorials. I have seen them and they help a lot. Thanks to them, I was able to make a trademark application and I just received the USPTO notification of "NONFINAL OFFICE ACTION" indicating 4 issues. Which include a "DISCLAIMER REQUIRED" and which you just explained. Others are "ENGLISH TRANSLATION REQUIRED" and "PROCESSIng FEE". However, the most important is the "ADVISORY: PRIOR-FILED APPLICATION". I would like to know how to request that thetrademark office suspend action on my application pending the disposition of the prior-filed application either goes abandoned or becomes a registration. The current situation of the prior-filed application is:
Status: Suspended Pending Administrative Review
Status Date: Dec. 05, 2023
Thank you in advance for your help

[@ElizabethPW]

If you are doing this yourself, you may want to just call the examiner and state that you want to suspend it to wait for this pending application -- they may be doing tha automatically anyway

[@italovolpe8635]

@@ElizabethPW thanks a lot

[@jalamoura_hair]

Hi,I recently received a office action on my Trademark it states my name trademark conflicts with someone else's. Do you offer your legal services for businesses in ohio?

[@ElizabethPW]

No I'm not taking new clients right now. You might try www.trademarkia.com/trademark-office-action

[@jalamoura_hair]

@@ElizabethPW Thankyou

[@NotableBlessings]

Was searching all over youtube for some help with my office actions--so many other videos were not helpful at all! Thankfully I found yours, which is great! I love how you walk us through step by step--thank you for doing this video!

[@ElizabethPW]

Welcome!

[@aprilmorgan3252]

I spoke with the attorney and I am still confused. Can you offer me some additional help? Can I contact you?

[@ElizabethPW]

I"m not taking new clients right now, but you can be put on the waiting list [e-mail]