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Is it hard to overcome a non-substantive office action?

Senior Trademark Attorney

Generally no. Non-substantive office actions involve formalities rather than the registrability of the mark, so resolving them is typically a matter of providing the correct information or documentation.

The one exception in this category that can be more difficult is a specimen refusal. If the mark is not yet in commercial use and a compliant specimen cannot be produced, the filing basis may need to be changed from use-in-commerce to intent-to-use, which requires additional steps. If the mark is in commercial use but the original specimen was refused, a substitute specimen that addresses the specific deficiency identified by the examiner is usually all that is needed.

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