How to Respond to a Trademark Office Action
Responding to a trademark office action typically involves approving recommendations, offering amendments or clarifications, or rebutting a refusal. Since office actions raise issues about what is blocking a trademark's approval for federal registration, and these issues can differ drastically, there is no one size fits all response.
While not every trademark application is issued an office action, many are. Let’s go over what you need to know about responding to an office action for your federal trademark application.
In this article, we'll cover:
Responding to Office Actions
A trademark office action is written correspondence from the United States Patent and Trademark Office (USPTO) that requires your adequate response in order for your registration application to continue. Also called “refusals,” office actions are issued by examining attorneys when something is wrong with an application—like an error in your contact information, likelihood of confusion between your mark and another, or an invalid trademark specimen.
When a trademark applicant receives an office action, a quick response is necessary. You usually have three months to respond (with the option to extend for another three months) before your application is abandoned. It’s important to make sure your response is “complete.” Each problem raised must be responded to all at once, not piecemeal.
Responses are typically submitted via the USPTO’s Trademark Electronic Application System (TEAS), taking the form of either an amendment to the application or a formal rebuttal of the issues raised. Though other forms of response may be allowed, such as via mail or hand-delivery, the USPTO prefers electronic communication. The refusal should let you know appropriate ways to respond to your particular office action.
Office Action Types
Beyond the various reasons you might receive an office action, there are two broad types of office actions to be aware of: non-final and final. Understanding which type you’re receiving can help you decide how to proceed.
A non-final office action is typically a first offense, though you can receive more than one. Once you respond to a non-final office action, there are three potential routes:
- If you resolve the issue: your application continues towards registration
- If you don’t resolve the issue: you’ll be sent a final office action
- If you resolve the original issue but create a new one: you’ll be sent a new non-final office action
A final office action prompts your last chance to respond, via a Request for Reconsideration.
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- If your request is accepted: your application continues towards registration
- If your request is denied: the application is abandoned, though you also have the option of appealing to the Trademark Trial and Appeal Board (TTAB)
What to Include in an Office Action Response
What is included in your office action response depends on what the refusal is about. Since the USPTO’s examining attorneys are real people looking at applications, there can be a lot of nuance in what the office action looks like and what will be accepted as a proper response.
In general, though, an office action reply needs to include three main things:
1. Literal Response
A literal response needs to speak directly to the issue raised. If the examining attorney says “Your trademark sounds like this other trademark that promotes goods like yours,” you need to respond to that statement.
2. Amendment
Changes to the application and/or trademark can be simple or complex, depending on the issue. Make sure the changes are carefully considered and reviewed, and that all requirements have been met as set forth in the office action.
3. Signature
A valid signature from the proper authority must be included. The correct signer will depend on who owns the trademark application, such as an individual or an LLC. If your application has an attorney of record, in the vast majority of situations, they will sign on your behalf.
Tips for Responding
To help ensure your office action response fulfills its duty, consider these tips:
- Adjust your language to fit the problem. If you’re responding to a minor procedural issue, this might mean using plain, non-technical words. But if the issue is more complex, a technical response may be necessary. Read the office action closely, as it will likely indicate what words to use in your response.
- Research the issue. In order to properly respond to the office action, you need to make sure you understand it. Whether you want to do that research yourself or hire a trademark attorney, it’s important to thoroughly understand the problem before you start addressing it.
- Respond to all issues. Multiple problems with an application may be detailed in a single office action. In your response, make sure all issues are addressed.
Should I have a lawyer respond to my trademark office action?
Often, the safest way to respond to an office action is to let a trademark lawyer deal with it.
By having an attorney deal with the application from the beginning, it reduces the risk of office actions in the first place. After all, someone who has never filled out a trademark application is more likely to make a mistake than someone who has filed hundreds (or more).
When you use Northwest’s Trademark Service, our expert trademark team prepares your application for the USPTO’s examining attorneys’ eyes. Including a clearance check and an attorney review, our service helps ensure your application has a better chance of success.
Want to get started? Learn more about our Trademark Service.
Responding to Common Refusals
Depending on the exact cause of your office action, the USPTO offers different suggestions for how to reply. A few common objections are listed below, as well as various tips the USPTO provides.
Indefinite Identification of Goods and Services
One common requirement (or request for a mandatory change) is for the “definite” identification of goods and services. This means that at least one of the goods/services in your application is unclear, too broad, or otherwise unacceptable. You are typically required to replace the unacceptable definition of your goods/services with something more clear, focused, and accurate.
If you get this type of office action, consider:
- Checking the suggested changes
The examining attorney is likely to provide recommended changes in your office action. You can review them and, if you agree, amend your application. If you disagree, you can research why these changes were suggested, then write your own more accurate descriptions with the examining attorney’s notes in mind. - Explaining the goods/services
If you’re worried that your goods/services are being misunderstood, you can reply with clearer descriptions for the application and a note to the examining attorney explaining your field and products more thoroughly. This could help connect the dots.
Disclaimer Required
If one aspect of your trademark is not able to be registered, usually because it is generic or descriptive, then the examining attorney might request a disclaimer for that part of the mark rather than a full rejection.
For example, if you are trying to register the business name Sailor Port Pub in relation to your bar services, the examining attorney might send you an office action requesting a disclaimer for the word “pub.”
Note: If the only issue with your application is a missing disclaimer, this will likely be handled in an examiner’s amendment, not an office action.
Specimen Refusal
A trademark specimen (example of the mark as used in commerce) can be refused for a variety of reasons. In many cases, the solution is just to provide new specimens that meet the requirements. Include in your response a brief explanation of what the specimen is, for example “screenshot from website.”
However, specimen refusals can’t always be fixed. For example, if the specimen doesn’t match the goods/services you’ve listed in the application, you might have to start over. Descriptions and classes can be explained, focused, and clarified, but they cannot be expanded by anything other than a new application.
That said, if you disagree with the examiner’s objection, write a response that includes clear, concise, fact-based points about why the refusal should be withdrawn.
Likelihood of Confusion
A likelihood of confusion refusal occurs when the examining attorney believes consumers could mix up your mark with another registered trademark.
There are a few courses of action if you receive this type of office action:
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- Explain why your mark does not cause likelihood of confusion. This means discussing how the trademarks differ or how your goods/services are different enough that consumers wouldn’t be confused.
- Amend your goods/services. You may be able to adjust your descriptions so the registered mark does not overlap with yours. Remember, you can’t expand your goods/services—only narrow them in scope.
- Reach out to the owner of the other trademark. You might be able to negotiate with the other owner to get a consent agreement that would allow you both to use your trademarks, legally and with protection. The examiner isn’t required to remove their objection if you provide a consent agreement, but there’s a good chance they will.
Frequently Asked Questions
Yes. You can file a single three month extension for $125.
No. You can only extend your office action response deadline once. The original deadline is three months, and it can only be extended an additional three months one time, totaling six months.
If you miss your office action response deadline, you can file a Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action form. In most cases, this must be done within two months of the Notice of Abandonment issuing.
As defined by the USPTO, a trademark is merely descriptive if it includes word(s) that detail an “ingredient, quality, characteristic, function, feature, purpose, or use” of the goods/services it promotes, and has not acquired additional meaning among consumers.
Descriptive marks can sometimes be registered on the Supplemental Register.
The USPTO will deem your trademark merely ornamental if it is not being used in a way the general public would view as a brand identifier. This usually means that the mark is “decoration” and not actually used in commerce to help consumers identify your brand/products.
For example, a logo decal on the side of a truck could be seen as ornamental, since such logos often promote third-party businesses, rather than the truck’s manufacturer.
Substantive and procedural office actions are common ways to describe the complexity of office actions, but these categories are not officially used by the USPTO. Substantive office actions refer to big ticket issues, like a likelihood of confusion refusal, whereas procedural office actions usually address smaller problems, like requests for additional information.
