Trademark Office Action Responding in Mexico

Responding to a Trademark Office Action in Mexico: Timeline, Process, and Cost

Registering a brand name is not always a simple or linear process. In Mexico, just like in other jurisdictions, the application may receive an official communication from the Mexican Institute of Industrial Property (IMPI), known as an Office Action. This notice outlines the reasons why the application cannot proceed without additional information, clarification, or amendment. Knowing how to properly prepare a reply, especially with regard to the fees involved in responding to trademark authority’s action, can significantly influence the outcome of your application.

What Is an Office Action and Why Is It Issued?

An Office notification is an official document sent by IMPI when there are formal or substantive grounds to refuse a brand registration. Common reasons include:

• Likelihood of confusion with an existing wordmark
• Lack of distinctiveness of the applied-for sign
• Violation of public order or moral standards
• Inconsistencies or errors in the application

Such notifications require a timely and well-structured answer to avoid a final refusal.

Timeline and Response Procedure

Applicants are given two months from the date of notification to submit a reply. This period may be extended once, for an additional two months, upon request. The answer must be filed in Spanish and typically includes:

• Arguments rebutting the examiner’s objections
• Supporting evidence or revised documents, if needed
• Legal reasoning based on Mexican intellectual property law

Even if the IMPI communication appears to be based on minor issues, failure to react properly can result in rejection of the application for protection.

How Much Does It Cost to Respond?

The cost of responding to objections from the trademark registre is a frequent concern, especially for startups and SMEs navigating limited budgets. The fee depends on the complexity of the objections, the volume of documentation required, and whether legal representation is involved. On average:

• Basic reply preparation and filing — from $200 to $400 USD
• Complex submissions with legal arguments and evidence — from $500 USD and up
• Hiring a lawyer or trademark consultant — fees vary depending on experience and scope of work

Hiring an experienced legal expert or attorney can not only save time but also significantly improve the chances of success.

Practical Tips for a Successful Response

To effectively address a Mexican examiner's objection, both legal and strategic considerations are crucial. Here are some key recommendations:

1. Understand the reason for refusal — knowing the exact issue helps shape your strategy

2. Consider the trademark office action response expense — define your budget and evaluate the need for legal help

3. Collect supporting evidence — especially if the objection is based on lack of distinctiveness

4. Respect deadlines — missing the deadline will lead to automatic rejection

5. Craft a well-argued submission — referring to Mexican case law or practice strengthens your position

6. Consult a knowledgeable legal advisor — even brief legal input can change your entire approach

7. Ensure accurate translations and formatting — filings must be in Spanish and professionally prepared

8. Track your application via IMPI’s official portal — to stay updated and avoid missing correspondence

Final Thoughts

Replying to a formal notification in Mexico is not just a procedural formality — it’s a critical step that can determine the success or failure of your brand protection. Understanding the IMPI’s requirements, responding within the proper timeframe, and preparing a clear, well-supported submission are all essential elements. With the right approach and a realistic view of the expenses, your mark can be successfully registered and protected in the Mexican market.