The Office Action Response Workbook · Section 2(d)
From USPTO refusal to a ready-to-file response.
Got a refusal that says your trademark is likely to be confused with another? This workbook walks you from the refusal letter to a finished response you file yourself, one worksheet at a time. No retainer, no hourly bill.
The workbook is everything in between.
What you'll actually do
Ten steps. Each one ends with "Done when."
Steps 1 to 4 take an evening. Steps 5 to 9 are where the real work happens. Tap any step to see its worksheet and its finish line.
1
Calendar your deadlineWorksheet 2.1: My deadline
Find the issue date near the top of the office action, work out your deadline and set a reminder two weeks before it.Done whenthe deadline and the two-week reminder are in your calendar.2
Download your documents from TSDRWorksheet 2.2: My documents
Save your office action, your own status page and a status page for every cited mark, all free on the USPTO's TSDR site.Done whenyou have a folder holding your office action, your own status page, and a status page for every cited mark.3
Read the office action and list every issueWorksheet 2.3: Issue log
List every refusal and requirement, not only Section 2(d), and every reason the examiner gave.Done whenevery refusal, requirement and examiner reason has its own line on your list.4
Check the quick exits firstWorksheet 2.4: Quick exits
Narrowing your goods, a pending cited mark, a lapsed registration: some refusals end without an argument.Done whenyou know whether a quick exit solves the refusal, or you have ruled each one out.5
Choose your factorsWorksheet 2.5: Factors I will argue
Always the marks and the goods. Add channels, purchaser care or third-party marks only when your facts support them.Done whenyou have a written list of the factors you will argue.6
Gather your evidenceWorksheet 2.6: Exhibit list
Third-party uses and registrations, price lists, dictionary entries: captured, labeled and logged as exhibits.Done whenevery fact you plan to argue has an exhibit beside it.7
Choose your authoritiesWorksheet 2.7: Authority planner
Match each examiner argument to its counter in Part 4, then pick two to four cases per factor from Part 5.Done wheneach factor you argue has at least one binding authority that you have read yourself.8
Draft your responseThe companion Word file
Paste each factor's legal standard from Part 3, then write your analysis where the [ANALYSIS] placeholder sits.Done whenno [brackets] are left, and every examiner reason has an answer.9
Stress-test your draftWorksheet 7.1: Pre-filing checklist
Read it as a skeptical examiner would. Cut anything you can't back with an exhibit or a case you have read.Done whenevery box on the pre-filing checklist is ticked.10
File and confirmWorksheet 7.2: Filing record
File on TEAS a few days early, save the confirmation, then check TSDR.Done whenyour response appears on TSDR.
My deadline
Example values. The serial number is fictional.
Before you write a word
Sometimes you don't need to argue at all.
Step 4 checks three quick exits first. If one fits, it can end the refusal without a single page of argument.
Narrow your goods or services
When only some of your listed goods overlap with the cited mark's, deleting or limiting those items can remove the conflict.
The cited mark is still pending
If it's an earlier-filed application, not yet registered, the examiner usually suspends your application while it's decided.
The registration missed its deadline
If the owner missed a required maintenance filing and the grace period has passed, you point it out and ask the examiner to suspend.
None of them fit? Worksheet 2.4 records that, and Step 5 starts your argument.
Will it look professional?
Your response is already formatted. Fill in your facts.
The companion Word file is formatted for filing, with the legal standards already in place. Every highlighted [bracket] is a fact only you know.
III. THERE IS NO LIKELIHOOD OF CONFUSION
A. Legal Standard. Likelihood of confusion is determined under the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Not every factor is relevant in every case, and “a single duPont factor may . . . be dispositive.” Kellogg Co. v. Pack’em Enterprises, Inc., 951 F.2d 330, 333 (Fed. Cir. 1991).
C. The Goods Are Not Related. [ANALYSIS]
- Caption block, headings, signature block and exhibit index
- Legal standards for each factor, built on binding decisions
- Each [ANALYSIS] prompt names the worksheet that feeds it
- Times New Roman 12-point, double-spaced, 1-inch margins
Example from the workbook. HARBORLIGHT and HARBOR LITE are invented marks.
How do I know what to argue?
Find the factors that win your case.
The scorecard shows where your case is strong. Then each of the 50 authorities is worked through on an invented pair of marks, with recent Board reversals for support and a box for your notes.
HARBORLIGHT vs. HARBOR LITE
| Factor | Favors me | Neutral | Favors examiner |
|---|---|---|---|
| 1. Marks: appearance and sound | |||
| 2. Goods or services | |||
| 3. Trade channels | |||
| 4. Purchaser care | |||
| 5. Fame |
Marine radar for commercial vessels vs. household lanterns. The marks favor the examiner, but three factors favor you.
Kellogg Co. v. Pack'em Enters., Inc.
951 F.2d 330 (Fed. Cir. 1991). A single DuPont factor may be dispositive. The court affirmed no confusion between FROOTEE ICE and FROOT LOOPS.
How the rule applies. The words are reversed, the cadence differs and the overall impressions differ. The dissimilarity of the marks is dispositive.
Our marks reverse the words too. Use with Factor 1, Step 7.
Avoid the common traps
Five rules that catch most self-filers.
Some arguments feel right and still can't work. Part 1 names them up front, so you don't spend your hours on a dead end.
Goods are compared as written, not as sold.
If the cited registration says "clothing" with no limits, it covers all clothing, sold everywhere, to everyone. Saying you sell only online won't help unless your identification says so.
The whole mark counts, but some parts count more.
A distinctive word usually outweighs a design or a word you disclaimed. Compare whole marks, never single words.
Standard characters cover every font and color.
If the cited mark is registered in standard characters, a different logo doesn't make the marks different.
You can't attack the cited registration in a response.
"We used it first" or "they stopped using theirs" doesn't work here. Build on the marks, the goods and your evidence.
Doubt goes to the registrant.
In a close case the examiner sides with the earlier mark, so bring concrete evidence, not only argument. Step 6 shows you how.
What's inside
Ten parts. One workflow, and the tools it sends you to.
Follow Part 2 from start to finish. Every other part is a tool you open when a step tells you to.
Understanding your refusalThe 13 DuPont factors in plain English, your deadline, five rules
p. 2The 10-step response workflowEach step with its worksheet and its "Done when"
p. 6Legal standards by factorPaste-ready standards built on binding court decisions
p. 13Examiner arguments and counters60 arguments examiners make, each with its answer and authority
p. 22How to analyze50 authorities, each applied to an invented pair of marks
p. 27Your response templateThe fill-in response, evidence logs and optional AI prompts
p. 78Filing and what's nextTEAS step by step, a pre-filing checklist, every possible outcome
p. 83FAQsExtensions, multiple cited marks, AI, missed deadlines
p. 87TRACE™, your refusal diagnosticA data-driven read before you invest your time
p. 89PackagesIf you decide you'd rather have it drafted for you
p. 91Your time
8 to 15 hours. Here's where they go.
Spread over two or three weeks, well inside a three-month deadline. Start the day you read your office action.
Steps 1 to 4
Calendar the deadline, download the documents, list every issue, check the quick exits.
Steps 5 and 6
Choose your factors and gather evidence. Step 6 takes the longest.
Steps 7 and 8
Pick your authorities and draft in the Word template.
Steps 9 and 10
Stress-test the draft, then file on TEAS and confirm on TSDR.
Not sure it's worth fighting?
Stress-test your refusal first. $25.
Before you put in 8 to 15 hours, a TRACE Report plays devil's advocate. It argues the examiner's side, scores your refusal on nine factors and 180 benchmarks against 600+ decided Board cases, and tells you whether confusion is surmountable and which gaps to close. Then the workbook takes it from there.
The workbook points you here in Step 5 and Part 9. If you later choose a response package, the $25 is credited toward it.
- Contest: the goods, right at the line
- Opening: the marks mean different things
- Gap: no third-party search in the file yet
Sample: PLAYES vs. PLAYERS, fictional marks. The Confusion Index is a proprietary Trademark Scrivener metric, not a USPTO standard. No outcome is guaranteed.
Get the workbook
Everything we'd check first on your refusal, laid out so you can do it yourself.
The Office Action Response Workbook
- The 106-page workbook (PDF). The 10-step workflow, 18 worksheets and the factor scorecard.
- 50 authorities. 23 binding court decisions and 27 Board decisions, each applied to an invented example.
- 60 examiner arguments. Each with a counter-argument and the authority behind it.
- The Word template (.docx). Your response already formatted, ready for your facts.
- Instant download. Both files on the page you return to after paying.
Pay with PayPal or any card. After payment you come straight back here to download both files. Not legal advice.
Pay and downloadPay through PayPal in about a minute, then download the 106-page PDF and the Word template on the next screen.
Calendar your deadlineStep 1 and Worksheet 2.1 put your deadline, and a reminder two weeks before it, in your calendar.
Work the ten steps, then fileMost people need 8 to 15 hours over two or three weeks. You file on the USPTO's TEAS form, normally with no fee for a response.
Questions
The ones people ask first.
Which refusals does it cover?
Section 2(d) likelihood-of-confusion refusals, where the examining attorney says your mark is too close to a registered mark or an earlier application. It does not cover other refusal grounds.
What do I get, and how?
The 106-page workbook as a PDF and the editable Word response template. You pay through PayPal and download both on the page you land on right after payment.
Do I need legal training?
No. It's written for applicants without a lawyer. Each step tells you what to fill in and what "done" looks like.
How long does it take?
Most people need 8 to 15 hours, spread over two or three weeks. Gathering evidence (Step 6) takes the longest, so start the day you read your office action.
Can I file the response myself?
If you're U.S.-domiciled, yes: you file through the USPTO's online response form. Foreign-domiciled applicants must be represented by a U.S. attorney.
Will this get my trademark approved?
No one can promise that. The examining attorney makes the decision. The workbook shows you how to build the strongest response your facts support.
What if I get stuck?
Get a TRACE™ Report for $25 for our read on your refusal, or have Scrivener draft the response with a flat-fee or success-based package.
Are USPTO fees included?
There is normally no USPTO fee to file a response. Fees for things like an extension are separate and paid by you directly to the USPTO.
Is this legal advice?
No. Scrivener is an independent trademark administrator, not a law firm, and the workbook does not create an attorney-client relationship. It teaches a method; you write, approve and sign every word you file.
Are the example marks real?
No. Every example mark, applicant and serial number is invented and labeled that way. The authorities they illustrate are real: 23 binding court decisions and 27 Board decisions, with pin cites supplied.
I lost my download link. What now?
Email info@trademarkscrivener.com with your PayPal receipt and we'll send both files again.
Your deadline is already running
Turn the refusal into a response you're proud to sign.
Ten steps, one worksheet at a time, and a template that's already formatted.
What happens next
- TodayBuy once and download the PDF and Word template instantly.
- 2-3 weeksWork the ten steps, about 8 to 15 hours in all, one worksheet at a time.
- ThenFile the response yourself from your own USPTO.gov account.
Instant download · PDF + Word · Not legal advice