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What is a Trademark Office Action and How Do You Respond?

header trademark office action

If you scroll through Tailor Brands’ blog page, you’ll find posts covering every step of the trademark application process.

If you’ve received an office action letter from the U.S. Patent and Trademark Office (USPTO) and are slightly panicking (so much legal jargon!), you’re in the right place. Rest assured, it’s common for trademark applications to receive an office action letter. 

We’ll cover what an office action is, the various reasons why you might’ve received it, and how to respond. By the end of this post, you’ll have all the information you need to navigate this bump in the road on the way to obtaining your trademark. 

What is a Trademark Office Action?

A trademark office action is a notification sent by a USPTO examining attorney to inform you there’s a problem with your chosen trademark or/and the application. 

The good news is this isn’t uncommon, and most times, you can resolve the issue(s) by following specific response regulations. It’s imperative you do because otherwise, the USPTO can’t register your trademark.

There are 2 types of trademark office actions: Non-final and final. 

  1. Non-final office action: The first letter you’ll receive from the U.S. Trademark Office will explain the problems with your application and allow you to address and correct them.
  2. Final office action: If you fail to address and correct the issues raised in the previous office action, you’ll receive a final office action. 

A final Office Action is your last opportunity to file your response during the trademark application process.

Structure of a Trademark Office Action

Trademark Office Action

Your trademark Office Action should have 4 main parts:

  1. The cover page identifies the applicant (you) using your application number, name, filing date, USPTO classification code, an attorney docket number, and the date they sent you the notification. 
  2. Page number one summarizes the office action, including any last response received and if the action is non-final or final.
  3. The following page includes the claim objections, why the USPTO is contacting you, and what you must address. It can be one of several reasons, such as simply changing a word, fixing technical errors, or including correct antecedents (we’ll look at those later).  
  4. Cited art rejections occur when a claim requires additional information to differentiate an invention from one already registered. 

What you need to know at this stage is the reason the USPTO is refusing your trademark application, so let’s look at the probable causes next.

Reasons for Office Actions and How to Respond

You can receive an office action during your trademark application process for several reasons. For example, the USPTO often sends office actions because of administrative and substantive errors in your application.

Common reasons you’ll receive an office action are:

  • There's an omission or error in your application, such as grammatical or technical
  • You've provided insufficient or unclear information rendering your description ambiguous
  • You might require a legal argument to support your pending application
  • You've provided an inadequate sample of how you'll use your trademark 
  • Your application is too similar to an existing mark or one applied before yours
  • Or you're attempting to trademark an unregistrable word or phrase, like a descriptive or generic name for a product or service

1. Likelihood of confusion refusal 

The term “likelihood of confusion” applies when the USPTO deems your trademark too similar to another pre-registered mark. It refers to when a mark you’re applying for sounds or looks too similar to another trademark and is in the same class of services or goods.

If your office action letter says there’s a likelihood of confusion then you need to look for:

  • Carefully read the government attorney's legal analysis; it comes after "Refusal Likelihood of Confusion with a Registered Mark, under Section 2 (d)"
  • Determine whether the attorney rejects all your services and goods or only a specific element
  • If your mark was too similar to another trademark, check it out

Note the attorney’s exact arguments because you can appeal a refusal. You’ll stand a better chance of winning your appeal when you have proof. But if you’re unsure, it often pays to employ a trademark lawyer at this stage to help you.

2. Trying to register a descriptive or geographic name

When you receive an office action regarding a descriptive or geographic error, it’s not a case of proving whether your trademark is sufficiently different. Here you may have applied for a mark that doesn’t comply with trademark law or isn’t available in your location, meaning you might be out of luck.

Descriptive

You can’t trademark a descriptive word because it describes a product’s characteristics, such as its function, features, quality, ingredients, and purpose of use. 

For example, Nike can’t trademark the descriptive term “basketball shoes” for their latest range of Jordan shoes since it describes a product’s function.

Remember: Trademarks exist to differentiate brands, not claim ownership of the function.

Geographical

Many well-known brands producing goods are geographical indicators. Geographical indicators identify goods from a specific region with a reputation for quality attributed only to that area.

Some examples are Florida’s oranges, Parmesan cheese, Champagne, and Swiss watches. Geographical terms are a separate category of intellectual property that you can register as marks but are more challenging to get than a standard trademark.

How to respond to a descriptive or geographic office action

  • Explain why you think your trademark is not descriptive
  • Amend your application to add a Section 2 (f) claim
  • Amend your goods or services to narrow the field of use
  • Ensure your geographic sign or term isn't generic for services or goods

3. Technical errors in your trademark filing

Technical errors are simple to make when using the TESS online application website. While it’s avoidable and most errors are fixable, some aren’t and others result in refusal, meaning you’ll have to re-file your application and pay again.

Some mistakes to look out for are:

  • Check for errors in your trademark and your name
  • Errors in class selection
  • An incorrect representation of your trademark

  • Incorrect level of "use" required for a use-based application
  • Incorrect "intent-to-use”
  • Filing an improper specimen
  • Applying for a non-registrable trademark (generic or descriptive)
  • An incorrect description of goods or services

How to File a Response

Before filing your response, be sure to address all the examiner’s objections because if you miss any, you’ll receive a final office action. And if you miss any the second time around, odds are the USPTO will refuse your application. 

You have 2 ways to file a response:

Respond by phone or email

It’s not uncommon for an examining attorney to request applicants to contact them by phone or email to resolve minor technical problems, such as clarifying services or goods, an examiner’s amendment, or priority action.  

The USPTO does this to speed up your application process. Be aware that your emails appear on your application record and are viewable on the USPTO website. 

Respond online using TEAS

If you can’t resolve an office action by email or phone, you’ll have to reply online using the USPTO Trademark Electronic Application System (TEAS) online service.  

For final office actions, you can only respond using the TEAS system or file an appeal via the Trademark Trial and Appeal Board.

TEAS response forms:

  • Use the TEAS Response to Office Action form when responding to a non-final office action letter
  • Use the TEAS Request for Reconsideration form when responding to a final office action letter

Only a responsible, proper person can sign your response, which means you, any authorized business member, or a legal professional.

Deadline for Filing a Response

Usually, the deadline for filing your response to an office action is 6 months after receiving the letter; however, it can be shorter. The office action letter should have your deadline printed on it. 

Deadline responses aren’t extendible, so don’t miss it because USPTO will view your application as abandoned if you do. 

Conclusion

I recommend you check out the following posts to help avoid any further mistakes:

If you’re still unsure, seek advice from a trademark attorney.

Thanks for reading!

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Terry OToole

Terry is a serial entrepreneur with over 25 years of experience building businesses across multiple industries – construction, real estate, e-commerce, hotelier, and now digital media. When not working, Terry likes to kick back and relax with family, explore Taoism’s mysteries, or savor the taste of fine Italian red wine.

This portion of our website is for informational purposes only. Tailor Brands is not a law firm, and none of the information on this website constitutes or is intended to convey legal advice. All statements, opinions, recommendations, and conclusions are solely the expression of the author and provided on an as-is basis. Accordingly, Tailor Brands is not responsible for the information and/or its accuracy or completeness. It also does not indicate any affiliation between Tailor Brands and any other brands, services or logos.

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