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What are the potential costs associated with responding to an office action?

Senior Trademark Attorney

The costs associated with responding to an office action depend on the complexity of the issue raised.

Government fees: in most jurisdictions, filing the response itself is free. In the US, each six-month extension of time costs $125 per class. Beyond that, government fees for office action responses are uncommon.

Legal fees: if the response requires substantive legal work; arguments against a likelihood of confusion refusal, evidence of acquired distinctiveness, or appeals; attorney fees are the primary cost. These vary by complexity and by the representative's rates.

Evidence costs: in cases requiring a consumer survey or other supporting evidence, the cost of gathering that evidence can be significant and should be weighed against the value of the registration.

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