Using AI to Respond to Office Actions

Struggling with office action responses? Harness the power of AI to streamline your workflow and craft high-quality responses with confidence.

This course walks you through how AI tools can help analyze examiner rejections, suggest persuasive arguments, and generate well-structured office action responses—saving you time and effort ultimately empowering you to work smarter and stay ahead in an evolving legal landscape.


Syllabus:

  • Overview of trademark office actions and why they are time-consuming.
  • Background on ActionResponder and its role in optimizing legal workflows for trademark attorneys.
  • Common substantive refusals, including Likelihood of Confusion (2(d)) and Descriptiveness (2(e)(1)).
  • Strategies for overcoming refusals, including key legal arguments, case law, exhibits, and third-party registrations.
  • USPTO guidance on AI in trademark practice, ensuring compliance, accuracy, and ethical use.
  • Live demo of ActionResponder: entering a serial number, retrieving TSDR data, selecting arguments, exhibits, and case law, and generating a structured first draft.
  • Monetizing AI in trademark practice through flat-fee office action responses, bundled trademark packages, and the TSDR Report Tool for client acquisition.
  • Expanding ActionResponder to support all substantive and non-substantive refusals.
  • Automating docket tasks, including client notifications and USPTO form preparation.
  • Collaborating with the trademark attorney community to refine AI-powered tools.
  • Open discussion on AI in trademark law, best practices, audience feedback, and feature requests for ActionResponder.


This course was taught by Sonia Lakhany and Grant Atkinson in March 2025.


Testimonials:

Seriously so good!! Really enjoyed and appreciate it SO much as always. -Alexandria Grace Van Dyke

$197.00
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CLE info

This course is eligible for 1 hour of CLE credit in most states.

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