How to tackle an office action

A USPTO Office Action is like a Box of Chocolates

You know that famous line from Forrest Gump? "Life is like a box of chocolates. You never know what you're gonna get."

That is exactly how I used to feel every time I received an Office Action. I never knew what I was going to get.

But unlike Forrest, who found a sense of sweet excitement in the surprise, my "box of chocolates" usually came with a heavy side of dread. Do you ever find your pulse quickening just a little as you wait for an Office Action to load?

I do. Yes, even now.

Whenever I receive an email notification or see it listed in TSDR, I tend to imagine the worst. I suppose it’s the perpetual imposter syndrome in me. I used to utterly dread opening them because I never knew what kind of issue was waiting inside. Even when I expected it, that familiar sense of unease would creep in.

A barrage of questions would flood my mind:

• What if I can’t overcome this?
• What if the argument I thought was brilliant didn’t get me any closer to an allowance?
• How much time is this going to take? Will the partners have to write off my hours, or will the client complain about the bill?
• What tricks do I need to pull out of my sleeves this time?

(Wait, do I even have sleeves?!)

The truth is, legal training is almost always a trial by fire. It doesn't matter if you are at a big firm or a small one. It’s like partners entirely forget that you just graduated law school, that you are all theory and have zero practical skills.

Personally, I wasn’t one of those naturally "lawyerly" people who grew up dreaming of being Jack McCoy, even if I watched a lot of Law & Order. So on my very first day, when a partner nonchalantly handed me a file and told me to just "take care" of an Office Action, I almost peed my pants. Nonchalant for him; a total internal meltdown for me.

If you are a junior attorney experiencing this, let me tell you right now: it is completely normal.

Sitting where I am today, 20+ years into my IP practice, I am still here. And I promise you, you will be fine. That anxiety doesn't mean you're a bad lawyer; it means you care. You care about your client, you care about the quality of your work, and, let’s be honest, you probably care about not getting fired.

My Epiphany: A Stack of Files and a Dinner Date

I had hundreds of these mini-heart attacks earlier in my career. But I can still vividly remember the day everything started to change.

I was sitting across from a senior associate who had recently lateraled over to our firm. I had just handed him a draft of an Office Action response for his review.

Waiting for him, my mind wandered as I scanned his semi-unpacked office. My eyes landed on a daunting, towering stack of Redwelds waiting for his attention. (Yes, I am getting to dinosaur level because this was before online filing was a thing).

Looking at the pile, I asked him empathetically if he was going to have to work late to get through all those Office Actions, mostly because I was already resigned to working late just to get through my own pile.

"No," he responded, without even looking up from my draft. "I'm meeting my wife for dinner."

I fell silent. Skeptical yet in awe.

How could he be so sure he’d make it to dinner on time? What if one of those Office Actions was incredibly difficult? Did he just have an unlimited supply of tricks up his sleeves?

I waited for him to look up before I pressed further. And THAT was the exact moment things shifted for me.

The Framework

He didn't have magic tricks. What he had was a system.

Right then and there, he showed me a framework. He taught me how to break down an Office Action, systematically attack it, and serve it right back to the USPTO. It’s like playing a game of ping-pong mixed with a side of chess.

I won't tell you that I've never had another mini-panic attack since that day. That would be a lie. But over time, as I answered more and more of these rejections, the process changed. Now, while that anxious feeling might still gather for a split second when I click "open," it quickly dissipates the moment I start scanning the document.

The dread gets replaced by strategy.

No big deal. I've got this.

Don't worry, you will too.

Deconstructing the Monster

Before you can break down an Office Action, you have to understand where it comes from: the USPTO.

The USPTO is a massive government agency with thousands of employees examining your filings. To ensure the law is applied as fairly and consistently as possible, everything is written down. EVERYTHING. The absolute last thing a bureaucratic agency wants is for individual examiners to interpret the law however they see fit.

What does this mean in reality, and how does it impact you? It means that most Office Actions are just generic form paragraphs strung together. Yes, they are literally copied and pasted. The refusals, the rejections, and even the case law cited for those assertions are standardized.

You Can Skim the Mumbo-Jumbo

Because these documents are mostly boilerplate, you can skim right through the vast majority of them. You don't need to panic, and you don’t need to spend hours cite-checking the case law to make sure the examining attorney isn't trying to pull the wool over your eyes.

Trust me, they aren’t. It’s way too much work for them to do that. (Remember, like the DMV, they are government employees).

I am not denigrating government workers here, especially not trademark examining attorneys. I am simply reminding you that they are paper-pushers, just like us! The only difference is that they are bureaucratic paper-pushers who are bound by much more stringent "rules" than we are in private practice.

Keeping that background in mind, your first task is actually to read the Office Action.

"Wait!" I can hear you mentally exclaiming. "I thought you just told me I could skim through it!"

Yes, you can skim the mumbo-jumbo. But you need to read the non-mumbo-jumbo paragraphs with absolute, laser-focused precision. Suddenly, an intimidating 8-page Office Action boils down to just one or two critical paragraphs.

(Not so tough now, are you, Office Action?)

(And yes, I absolutely talk to my Office Actions in my head. Life is more fun that way).

Knowing that you only need to focus on a couple of paragraphs should instantly bring your blood pressure down.

Mining for the "Golden Nuggets"

Let’s talk about these paragraphs. I call them the golden nuggets. This is where the examining attorney "customizes" the generic refusal to fit your specific case. (Though, let’s be honest, there is still a lot of copying and pasting happening here, too, just with a few words swapped out).

Your job is to isolate and take apart this golden nugget. This is your target of attack.

And by attack, I mean play a nice game of ping-pong. Instead of worrying about coming up with the winning arguments, think about how you can keep the rally going. To keep the rally going, you focus entirely on those golden nuggets, which inevitably shows the spin of the ball in air.

While the examiner's customized paragraphs might look like an aggressive offensive move, they are actually setting you up for your own smash. When you draft your response, the question shouldn't be, "How do I fight this law?" Instead, it should be:

"How do my client's facts coexist with the law the examining attorney kindly pointed out?"

That is how you keep the rally going. That is how you stay on the table.

Even if you did want to be Jack McCoy, you aren't going to rewrite the law here. The law is the law. The law simply represents the boundaries of the table and the rules of the game.

The Chess Side: Solving the Puzzle

If finding the golden nuggets is like keeping a ping-pong rally alive, figuring out your response is where the chess game begins. But don't think of chess as a brutal battle of wits. Think of it as a puzzle.

Because every trademark application and client is unique, the strategy is always highly fact-specific. (We’ll dive into the weeds of specific kinds of rejections in future posts). But from a theoretical level, your approach to the puzzle should always be the same.

When you look at a chess board, you don't just stare at the piece that’s threatening you; you look at the whole board to see where the open spaces are, meaning where you can advance, pivot, or maneuver to avoid their trap. An Office Action puzzle is no different. The examiner has laid out their golden nuggets. Your job isn’t to kick the board over. Your job is to look for the gaps they left wide open.

• Are the golden nuggets too wide-sweeping? (For example, rejecting the specimen for the entire class when the issue only applies to one of the many items in the description?)
• Is there evidence you can present that will nullify the golden nuggets?
• Are the golden nuggets avoidable if you make an allowable amendment?

These are just some of the questions I ask myself.

Now, let's be realistic: not every Office Action has an easy solution. Sometimes, there are no solutions at all. (Section 2(d), I am looking at you). Other times, it ends in a stalemate or requires external intervention, like an appeal.

Nevertheless, once you stop viewing an Office Action as a catastrophic failure and start viewing it as a puzzle waiting to be solved, the dread vanishes. You don't need magic tricks up your sleeves, and you don’t need to reinvent the wheel.

Know that millions of applicants have played this ping-pong and chess game before you. You can always look to them for inspiration and guidance.

The game is on. And you're completely equipped to play it.