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Can I submit new evidence or information as a part of an office action response?

Written by Jan Buza

Co-founder of Trama

Yes, submitting new evidence or information is the standard procedure when responding to OAs, as this information is often required to overcome substantive refusals. It includes:

Sales figures, advertising expenditure, and market research data demonstrating acquired distinctiveness.
Expert opinions supporting registrability arguments.
A substitute specimen, where the original was refused.
A consent agreement or co-existence agreement from the owner of the cited conflicting mark.
Evidence of third-party registrations of similar marks in the same class, supporting an argument that the mark is not uniquely distinctive.
Dictionary definitions or industry usage evidence, where relevant to a descriptiveness argument.

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