Common Office Actions and How to Overcome Them

Episode Summary:

In this episode, Attorney Mark Goodman, a Nevada-based intellectual property attorney, breaks down one of the most common roadblocks in the trademark and patent process — Office Actions. He explains what they are, why the USPTO issues them, and how business owners, startups, and inventors can respond effectively. Mark shares practical strategies to avoid application delays, prevent abandonment, and improve the chances of approval. He also highlights when it’s time to bring in an attorney and why legal guidance can make or break a filing.

Key Timestamps:

00:40: What an Office Action is and why it’s issued
02:10: Trademark deadlines: new 3-month rule and extension options
04:50: What happens if you miss an Office Action deadline
07:30: The risks of abandoned applications and how to revive them
09:40: Common Office Action reasons in patent filings
11:30: How examiners find conflicts or “prior art”
13:00: Substantive vs. non-substantive Office Actions explained
15:20: Common trademark issues: conflicts, descriptiveness, and generic marks
16:40: Why handling Office Actions alone is risky
18:00: When and how an attorney can help strengthen your response

About the Show:

Inherently Distinctive is a podcast for business owners, entrepreneurs, and creators who want to understand how intellectual property law protects their ideas. Each episode features insights from experienced attorneys covering trademarks, patents, and the strategies behind strong brand protection.