Received a USPTO Office Action on Your Madrid Trademark?
The USPTO requires you to work with a licensed U.S. attorney to respond. I help international applicants navigate this — quickly, affordably, and with flat fees so you know exactly what to expect.
You’re in the Right Place.
Here’s what you need to know.
If you filed a trademark application through the World Intellectual Property Organization (WIPO) using the Madrid Protocol and have received an Office Action from the United States Patent and Trademark Office (USPTO), you are not alone. This is one of the most common situations I handle, and for most applicants, it is very manageable with the right U.S. attorney on your side.
The USPTO requires all applicants without a U.S. address to retain a licensed U.S. attorney to respond to an Office Action. This is a mandatory requirement — you cannot file a response on your own. But with experienced counsel handling your case, your path to a U.S. trademark registration remains very much open.
You have 6 months to respond. Unlike most USPTO office actions, Madrid Protocol applicants receive a full 6-month response period — with no extension required. That said, the sooner you reach out, the more options we have.
What Is the USPTO Asking For?
USPTO Office Actions on Madrid applications typically fall into two categories. Understanding which type you have will help set expectations — and in either case, I can assess your situation and advise you on the best path forward.
Routine Requirements
These are technical or administrative requirements that are not rejections of your trademark on its merits. They are resolved by providing the correct information or making straightforward amendments. Routine requirements include:
- U.S. attorney designation — The USPTO requires you to appoint a licensed U.S. attorney. Retaining me satisfies this requirement.
- Applicant email address — The USPTO requires a valid email address for the applicant on record.
- Amendment to goods/services description — The USPTO may require clarification or revision of how your goods or services are described.
- Description of the mark — If your mark has design elements, the USPTO may require a written description.
- Color claim — If your mark uses color as a feature, a color claim statement may be required.
- Disclaimer — The USPTO may require you to disclaim an unregistrable component of your mark.
- Translation or transliteration — If your mark contains non-English words or non-Latin characters, the USPTO may require a translation or transliteration.
Once I have your information, these matters are straightforward to address and resolve.
Substantive Rejections
Substantive rejections go to the registrability of the mark itself and require a more individualized assessment and strategic response. Common substantive rejections include:
- Likelihood of confusion (§2(d)) — The USPTO believes your mark is too similar to an already-registered mark. There are multiple strategies for addressing this — the right approach depends entirely on the specific facts of your case.
- Merely descriptive (§2(e)(1)) — The USPTO believes your mark merely describes a feature or characteristic of your goods or services. Several routes to registration may still be available.
- Geographic descriptiveness or misdescriptiveness — The mark is refused on the basis of a geographic term.
If you have received a substantive rejection, I will assess your specific situation and give you an honest evaluation — including a candid assessment of how difficult the rejection may be to overcome. Not every substantive refusal can be successfully challenged, and I believe you deserve straightforward advice so you can make an informed decision about how to proceed. Where routes to registration exist, I will identify them and recommend the best strategy for your situation.
Flat-Fee Pricing — No Surprises
Know exactly what you’re paying before we begin. No hourly billing surprises.
| Response Type | Fee |
|---|---|
| Appointment of U.S. attorney and/or applicant email address only | $250 |
| Routine office action response (goods/services description, disclaimer, translation, color claim, etc.) | $375 |
| Complex office action response (substantive rejections such as likelihood of confusion or mere descriptiveness) | $800 – $1,200 |
Note: USPTO official filing fees may apply separately in certain situations, such as when additional classes are required. Any applicable official fees will be identified and communicated to you in advance.
I work with international clients every day and have systems in place to make payment as simple as possible, wherever you are in the world. My primary payment platform is Wise (formerly TransferWise), which minimizes currency conversion fees and bank charges for international transfers. I can also accommodate direct bank transfers and wire payments. Whatever works best for you — I’ll make it work.
Ready to move forward? Contact Me →
Here’s Exactly What Happens Next
The process is straightforward. Here’s what to expect from the moment you reach out.
1. Send me your application number.
Just your USPTO serial number — I’ll look up your application and office action directly from the USPTO database. No need to send documents.
2. I assess your office action and respond promptly.
I’ll review what the USPTO is requiring, identify your options, and send you a firm flat-fee quote. If I need additional information from you to complete the response, I’ll let you know exactly what to gather.
3. You decide whether to proceed.
No pressure, no obligation at this stage. If you’d like to move forward, I’ll send you a retainer agreement for electronic signature and a secure link to submit your retainer payment.
4. I prepare and file your response.
Once I have your signed retainer agreement and payment, I prepare and file your response to the USPTO within 3 business days. I can work on short notice when a deadline is approaching — though the earlier you reach out, the more options we have.
Ready to move forward? Contact Me →
Frequently Asked Questions
What is a USPTO office action on a Madrid Protocol trademark application?
When you file a trademark application through the Madrid Protocol via WIPO, your application is forwarded to each country you designate — including the United States. The USPTO independently examines your application under U.S. trademark law. If the USPTO has questions or requirements, it issues an Office Action — a formal document listing what needs to be addressed before your trademark can proceed to registration in the United States.
Do I need a U.S. attorney to respond?
Yes. The USPTO requires any applicant who does not have a U.S. address to be represented by a licensed U.S. attorney or agent when corresponding with the USPTO, including responding to office actions. You cannot file a response on your own. Retaining a U.S. attorney is the required first step.
How long do I have to respond?
Madrid Protocol applicants receive 6 months from the date the office action was issued to file a response. This is longer than the standard USPTO response period, and no extension is required to receive the full 6 months. If your deadline is approaching, please reach out immediately — I can work on short notice.
What happens if I don't respond?
If no response is filed by the deadline, the USPTO will issue a Notice of Abandonment and your U.S. trademark application will be lost. If the abandonment was genuinely unintentional, you may be able to file a petition to revive — but it must be filed within two months of the Notice of Abandonment, and a fee is required. After that two-month window closes, the application is gone permanently and cannot be recovered. You would have to start over with a brand new application. The petition to revive is also only available where the abandonment was truly unintentional — it is not a fallback option for applicants who chose not to respond and later changed their mind. The only reliable path is to respond before the original deadline.
What information do I need to provide you?
The minimum I need to get started is your USPTO trademark application serial number — I can look up your application and office action directly from the USPTO database from there. However, the more information you can provide upfront, the faster I can move.
Helpful additional information includes:
- A brief description of your business and what products or services you offer under the mark
- Your company website, if you have one
- Any thoughts you have on how you’d like to proceed, if you already have a sense of that
- Your preferred contact information and time zone
For example, if the USPTO is requiring a clarification of your goods or services description, knowing what your business actually does helps me draft an accurate and effective amendment. The serial number gets us started — everything else helps us move faster and get it right.
How quickly can you file a response?
Once I have your signed retainer agreement and payment, I prepare and file your response to the USPTO within 3 business days. I am also available to work on short notice when a deadline is imminent — if your deadline is coming up fast, please reach out immediately and let me know. Earlier contact always means more options, but I will do my best to accommodate urgent situations.
What does it cost?
I charge flat fees so you know exactly what you’re paying before you commit to anything:
- Appointment of U.S. attorney and/or applicant email address only — $250
- Routine office action response (goods/services description, disclaimer, translation, color claim, etc.) — $375
- Complex office action response (likelihood of confusion, mere descriptiveness, or other substantive rejections) — $800–$1,200
I will give you a firm quote before you commit to anything. There are no hourly billing surprises.
My mark was rejected for likelihood of confusion — can that be overcome?
Possibly, yes. A likelihood of confusion rejection is the most fact-specific type of office action, and there are multiple strategies for addressing it — not all of which involve simply arguing that the examining attorney is wrong. The right approach depends on the specific marks involved, the goods and services, the channels of trade, and other factors unique to your situation.
I will give you an honest assessment of how strong or difficult the rejection may be to overcome, and walk you through the realistic options. Not every likelihood of confusion rejection can be successfully challenged, and I believe you deserve straightforward advice so you can make an informed decision about how to proceed.
My mark was rejected as merely descriptive — what can I do?
Merely descriptive refusals are challenging but not always fatal to registration. There are several possible routes, including arguing that the mark is not in fact merely descriptive of your goods or services, seeking registration on the Supplemental Register, or claiming acquired distinctiveness if the mark has been in use long enough to have become associated with your business in the minds of consumers.
As with any substantive rejection, I will give you an honest evaluation of your specific situation and the realistic options available. Each case is different, and the right strategy depends on the facts.
I'm not in the United States — can you still represent me?
Absolutely. I regularly assist international trademark applicants with USPTO office actions on Madrid Protocol applications — typically several every week. I have handled these matters for applicants from more than 30 countries across Europe, Asia, Australia, the Middle East, Africa, and the Americas. Location is no barrier to working together.
English is not my first language. Can we still communicate?
Yes. I regularly work with clients from around the world and am happy to correspond with you in your language using available translation services. Please don’t let language be a reason not to reach out.
My deadline is only a few weeks away. Is it too late?
Not necessarily. Please contact me as soon as possible with your USPTO application serial number. I can often work on short notice, and once I have your signed retainer agreement and payment, I can prepare and file your response within 3 business days. The sooner you reach out, the more options we have — but don’t let a looming deadline stop you from contacting me.
How do I pay? Do you accept international payments?
Yes. I work with international clients every day and have systems in place to make payment as simple as possible, wherever you are in the world. My primary payment platform is Wise (formerly TransferWise), which minimizes currency conversion fees and bank charges for international transfers. I can also accommodate direct bank transfers and wire payments. Whatever works best for you — I’ll make it work.
All fees are quoted in U.S. dollars. Once you decide to proceed, I will send you a retainer agreement for electronic signature and payment instructions.
What countries have you assisted Madrid Protocol applicants from?
I have handled USPTO office actions for Madrid Protocol applicants from more than 30 countries, including the United Kingdom, Australia, Canada, Germany, France, Italy, Turkey, the UAE, South Africa, New Zealand, Japan, India, Hong Kong, Chile, and others throughout Europe and Asia. If your country is not on this list, please don’t hesitate to reach out — chances are I can help.
Working With Clients Across the Globe — Every Day
I work with international trademark applicants on a daily basis. I have assisted clients with USPTO office actions arising from Madrid Protocol applications filed in more than 30 countries, including the United Kingdom, Australia, Canada, Germany, Turkey, the UAE, South Africa, New Zealand, Japan, India, Hong Kong, Chile, and throughout Europe.
If English is not your first language, that is not a barrier. I regularly work with clients through translation and am happy to correspond with you in your language using available translation services. Please do not hesitate to reach out.
✦ USPTO Registered Patent & Trademark Attorney Since 2006
✦ 650+ Trademark Registrations in 40+ Countries
✦ Madrid Protocol Office Actions from 30+ Countries
✦ Flat Fees · Fast Turnaround · Global Clients Welcome
Your U.S. trademark registration is still within reach.
Send me your USPTO application serial number and I’ll assess your office action. Flat fees. Fast turnaround. Clients welcome from anywhere in the world.