USPTO Office Action Response

The USPTO issues an Office Action when they find a problem with a trademark application. An Office Action gives legal reasons why the USPTO has chosen to refuse trademark registration.

However, trademark applicants have an opportunity to respond and challenge the refusal.

The USPTO issues Office Actions during the examination. During the examination part of the trademark registration process, the USPTO examiner seeks out defects in a trademark application. If the examiner finds irregularities, the examiner issues an Office Action stating the defects.

The USPTO issues Office Actions when a trademark application does not comply with the law.

Sometimes a minor deviation causes an Office Action; other Office Actions arise because of significant issues with a trademark application.

Common reasons for getting a Trademark Office Action:

Likelihood of confusion: When the USPTO determines that two trademarks would cause confusion with one another, they issue a “likelihood of confusion” refusal. Applicants may respond by making appropriate legal arguments contending that the two trademarks are not so similar as to be confusing.

Descriptiveness: If a trademark describes the goods or services that it represents, it is descriptive. The USPTO will refuse to register a descriptive trademark on the Principal Trademark Register but may register the mark on the Supplemental Trademark Register.

Merely ornamental: If you use the trademark as a decoration and not as a brand, the USPTO deems such use as “merely ornamental.” The USPTO refuses to register merely ornamental trademarks.

Specimen Refusal: If a trademark specimen does not show proper trademark usage, the application gets refused. To solve this problem, submit a trademark specimen that shows adequate usage of the trademark.

Surname Refusal: The USPTO might take issue if the proposed trademark is mainly a last name. This is called a “surname refusal.”

Disclaimer: If a trademark contains a common word, such as “incorporated” or “studios,” the USPTO will want the applicant to disclaim that word. Disclaiming the word means that the applicant does not assert rights to that particular word. However, this decision must be considered carefully.

Class Refusal: If you file your trademark application in the wrong trademark class (or your application requires additional trademark classes), you will need to fi that.

There are many more reasons that the USPTO issues trademark Office Actions, but this list shows the most common causes.

To respond to an Office Action, you file a form on the USPTO website. This form allows you to choose how you wish to reply.

While this form may seem simple, do not be deceived. Since you have a limited number of chances to contest the Office Action you either need to be 100% sure that you are responding correctly (and completely) or you need to secure the services of a professional trademark agency who can complete the process.

Generally, you have six months to reply to a trademark Office Action. If you fail to respond, you risk abandoning your application. If you abandon your application, you will have to start the trademark registration process over again.

Note that for some Office Actions, you might need to fix an underlying issue with your trademark application. Since that can take time, do not wait until the last minute. Start the response early to improve your chances of success.

Depending on the complexity, costs vary. As with other trademark costs, a lot depends upon how you approach the issue. For more straightforward Office Actions, the cost to draft and submit an office action response will only be a few hundred dollars. For more difficult Office Actions, it could be thousands.

There are two kinds of trademark Office actions:

Non-final Office Action: If an issue is being raised for the first time, the U.S. Trademark Office will issue a non-final Office action. The Office action explains the problems with the application and gives the applicant an opportunity to address or correct them.

Final Office Action: If the applicant has failed to overcome the issues raised in a previous Office Action, the USPTO will issue a final Office action. You have more limited rights to respond to final Office action

No, we are not a legal firm and do not offer legal advice. However, our professional team of trademark registration experts have helped over 5000+ business owners register their trademark. They know the ins and outs of trademark registration, and know exactly how to maximize your chances of getting your trademark registered.

No, since we are not a legal firm, we will first assess your case, and guide you on the next steps. We will evaluate the eligibility of your Trademark Office Action, and decide if we can work together or you require an attorney.

Not every objection in the Trademark Office Action requires a legal response. Most objections require the applicant to make fairly simple amendments to the application and typically involves things like fixing incorrect information about the applicant (perhaps the company is an LLC even though the application is listed as a Corporation), and/or “disclaiming” the rights to one of the words in the trademark.

Our team of trademark registration experts have over 10+ years of experience in filing trademarks for clients from different industries.

While a lawyer may charge you a hefty fee depending on the number of hours they worked on your case; with us, you won’t be charged by the hour.

We offer a flat fee for our services, which is only a fraction of the fee you’ll end up paying a trademark attorney for the exact same service.