TMAE Summit 2025Response‑Ability: Researching and Drafting Office Action Responses

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At the TMAE Summit on September 16-17, 2025, Emily Quackenbush (Senior Paralegal, Trademark, Copyright, Internet & Advertising, Perkins Coie), Brent M. Radcliff (Associate General Counsel of Brand at one of the nation’s largest health insurance companies), and Matt Saunders (Founding Partner at Saunders & Silverstein) presented the session, “Response‑Ability: Researching and Drafting Office Action Responses.” Download presentation materials here. Here are some key takeaways from the session:

1. The KPI session is really relevant to help you avoid receiving office actions. That way you have an amazing track record.
2. It’s an incentive to an Examining Attorney to move your application along so if you’ve received a suspension letter and have reason to believe the suspension should be lifted, do contact the Examining Attorney with all relevant information. Call or email – but note that phone hold times are very long.
3. OA responses are opportunities to get creative and offer client services. Often they require a lot of thought, creativity and strategy, especially now with the new timeframe on office actions. This is a fun part of the job!
4. Whether or not you can sign on behalf of the client really depends on client style. Sometimes they don’t want to see anything before filing.
5. When you get a substantive office action (likelihood of confusion, descriptiveness, genericness, failure to function) the decision has to do with not just how to respond but whether to respond. Perhaps you investigate the 2(d) citations and decide how to respond or if you’ll do something else.
6. Consider presenting the attorneys with a nice package saying here’s what I see, here’s what we can do, and here’s a proposed strategy – what do you think?
7. Make sure you document search/clearance records so you can point out to the client any issues you’ve identified even before filing.
8. Failure to function refusals need to be carefully reviewed to determine if the refusal was proper. Sometimes the examining attorney just needs more information or support on the record.
9. It’s great for attorneys and TMAs to have conversations about what constitutes an appropriate specimen, particularly in the tricky circumstances.
10. Create a deck for consumer products and merchandise team to explain trademark use so that when we request specimens, we get what we need.
11. Keep archives – even if the product line is done. You can use these files for cancellation or enforcement proceedings.
12. Plan for it when you are going to need declarations, consent agreements, etc. Similarly, plan for it if you’re filing a trade dress application and you’re going to need to establish acquired distinctiveness.
13. For ITU applications, right after the NOA is issued, this is a great time to get with the client and explain what is an acceptable specimen to avoid office actions.
14. When deciding whether to take advantage of the extended time to file an office action response, it often depends on the client. If you know a client is going to take a long time to respond, propose an extension but also indicate what the response will be. If it’s a specimen refusal and you know the client isn’t ready, it’s a good idea to take advantage of the extension. From the in-house perspective, take advantage of the extension if you don’t have any further budget to spend on prosecution and you need to file the extension to move the budget to the next fiscal year.

Speakers

Emily Quackenbush, Senior Paralegal, Trademark, Copyright, Internet & Advertising, Perkins Coie

Emily Quackenbush has 25+ years of trademark experience working in both the law firm and in-house environments. While currently holding a Senior Trademark Position with a leading law firm in their Denver office, she has worked for a wide range of clients covering many industries. Many years of her working experience includes duties and roles like Trademark and Branding Portfolio Management and Director of Intellectual Property as well. Emily works very closely with her clients, along with the attorneys on her team to ensure the best possible trademark service and brand protection. Simply put, she loves all things “brands” with a noteworthy interest in consumer trends while providing excellent client service.

Emily has served over 10 years on INTA Committees. She is currently serving as the Director of the Trademark Administrators Certificate Program and has previously served as Co-Chair of the Culture Subcommittee within the Trademark Administrators Committee for several terms. Emily has also participated on several TMAP Project Teams and has moderated and planned several amazing sessions. She has also served as Co-chair for the 2024 TMAP Meeting in Denver. While on the Trademark Administrators Committee she has also helped advance various initiatives over the years, including the many Idea Exchanges and promotion of Sign Me Up Campaign.

Brent M. Radcliff, Associate General Counsel of Brand at one of the nation’s largest health insurance companies

Brent M. Radcliff is a former USPTO Examining Attorney and currently serves as Associate General Counsel of Brand at one of the nation’s largest health insurance companies. Previously, he served as Lead IP Counsel at a Fortune 200 company. Brent remains active in numerous IP organizations including leadership roles in the International Trademark Association and The Hon. Charles Pannell, Jr. IP Inn of Court.

Matt Saunders, Founding Partner at Saunders & Silverstein
Matt Saunders is a founding partner of Saunders & Silverstein, and concentrates his practice on trademark and copyright matters. He is trusted by clients of all sizes and industries to manage domestic and international trademark portfolios, and to provide strategic counseling in connection with trademark clearance, registration, licensing, and enforcement.

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