trademark office actions

Responding to Trademark Office Actions

Approximately three (3) months after submitting a trademark application to the United States Patent and Trademark Office (“USPTO”), the application will be assigned to an Examining Attorney. The Examining Attorney will review the application for any administrative or substantive issues and deliver an “office action” if there are any such issues. If no issues with the application are identified, the mark will be submitted for publication. If no oppositions are filed during the publication period, the mark will proceed to registration in less than three (3) months. 

What is an office action and how do you respond to it?

Trademark Office Action Basics

An office action is a notification from the USPTO-assigned Examining Attorney that at least one issue with the application exists which may preclude registration. Administrative issues may include: 1) a specimen of use that is merely ornamental, instead of commercial; 2) a description of goods and/or services associated with the subject mark that is unclear, indefinite, and/or too broad; and 3) an English translation of a foreign word that is generic, geographic or otherwise unregistrable. The majority of refusals are based on either a likelihood of confusion with a previously registered or pending mark, or that the mark is merely descriptive of the goods and/or services associated with the applicable mark. 

Responding to a Trademark Office Action  

When responding to an office action, it is important to address all of the issues raised by the Examining Attorney. The USPTO will consider any issues that are not addressed in an office action response to have been effectively conceded by the applicant. Additionally, applicants must be aware of any response deadlines that are set by the USPTO. Failing to respond by the allotted deadline can lead to abandonment of both the applicable mark and the application fee. Some office actions can easily be fixed by either emailing or calling the assigned Examining Attorney, such as to disclaim a word or have a merely descriptive mark placed on the Supplemental Register. Other more substantive office actions require legal research and preparation of well-crafted responses that, hopefully, will persuade the Examining Attorney to overturn a refusal and move the application through to publication. Once an office action response is submitted, if it is deemed unpersuasive by the Examining Attorney and she/he issues a final refusal, the applicant can either file an appeal with the USPTO Trademark Trial and Appeal Board (“TTAB”), request reconsideration, or abandon the subject application. 

The foregoing is only a brief overview of some of the trademark office action issues that applicants can expect to face in the trademark filing process. If you are thinking about filing a trademark application, or if you have received an office action from the USPTO, it is wise to consult with a trademark attorney that can steer you through the process. If you would like to learn more about this topic or require our assistance, please email us at, call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not rely on any information contained herein without seeking the advice of an experienced attorney. 

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David Klein

David Klein is one of the most recognized attorneys in the technology, Internet marketing, sweepstakes, and telecommunications fields. Skilled at counseling clients on a broad range of technology-related matters, David Klein has substantial experience in negotiating and drafting complex licensing, marketing and Internet agreements.

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