Trademark Attorney Needed — Response to USPTO 2(d) + 2(e)(1) Office Action

Posted 5 days ago

Only freelancers located in the U.S. may apply.U.S. located freelancers only

Summary

I need a licensed U.S. trademark attorney to review, finalize, and file a response to a USPTO Office Action, and act as attorney of record. The basics: Application for SOAP OPERA MAGAZINE, Serial No. 99696043 (Class 41, online publication of electronic magazines in the field of entertainment). Nonfinal Office Action issued June 27, 2026, with two refusals: (1) Section 2(e)(1) merely descriptive, and (2) Section 2(d) likelihood of confusion, citing Reg. No. 1491072, SOAP OPERA DIGEST. Response deadline: September 27, 2026. What's already done: The strategy is set and the groundwork is prepared. Plan is to amend to the Supplemental Register (which moots the 2(e)(1) refusal), enter the required disclaimer of "MAGAZINE," and contest the 2(d) refusal on a crowded-field / weak-mark argument. The core of that argument: the cited SOAP OPERA DIGEST registration is on the Principal Register only under a Section 2(f) acquired-distinctiveness claim with "DIGEST" disclaimed, per its own TSDR record, which is the registrant's own concession that the shared "SOAP OPERA" wording is descriptive and entitled to only a narrow scope of protection. Supporting case law has been identified (Palm Bay, Juice Generation, Jack Wolfskin, Apex Bank, TMEP 1207.01(b)(iii) and (b)(ix)), draft argument language exists, and third-party crowded-field evidence is being compiled. Be upfront with you: I've had two attorneys review the file already. One declined to take 2(d) refusals as a category. The other, who does handle 2(d) work and quoted a fee for it, reviewed my specific file and advised the odds of overcoming this refusal are low and that he'd be cautious about the fee being worth it, though he was willing to file if I wanted to proceed. I'm sharing that so you can give me a genuinely honest read rather than just a yes. What I need from you: 1. A candid assessment of whether the crowded-field / weak-mark argument above has a real shot, and any holes you see in it. 2. If you think it's worth pursuing, a flat fee to review, sharpen, and finalize the response, compile/verify supporting evidence, and file as attorney of record before the deadline. Requirements: Must be a licensed U.S. trademark attorney in good standing (please include your bar number so I can verify). Experience specifically with Section 2(d) likelihood-of-confusion responses required — please reference relevant past work if you can. Budget: Open to flat-fee proposals; let me know what you'd charge given the prepared groundwork. Timeline: Need this filed before September 27, 2026, so I'd like to move within the next 1-2 weeks.

  • Less than 30 hrs/week
    Hourly
  • < 1 month
    Duration
  • Intermediate
    Experience Level
  • Remote Job
  • One-time project
    Project Type
Skills and Expertise
Mandatory skills
Trademark
Trademark Consulting
Activity on this job
  • Proposals:Less than 5
  • Last viewed by client:4 days ago
  • Interviewing:
    0
  • Invites sent:
    2
  • Unanswered invites:
    1
About the client
Member since Mar 31, 2023
  • United States
    Shelby Twp4:16 AM
  • $584 total spent
    4 hires, 0 active
  • 1 hour

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