Trademark Office Actions: How Should Applicants Respond?

What to Know About Trademark Office Actions from the United Stated Patent and Trademark Office (USPTO)

It can be disheartening to receive a trademark office action from the United States Patent and Trademark Office (USPTO). However, it doesn't mean that the application has been rejected outright. An office action is a challenge that many business owners can overcome if they have the right information and an experienced trademark attorney's guidance.

What is a Trademark Office Action from the USPTO?

A trademark office action is sent out by a USPTO examining attorney when they find potential issues with the trademark or the application itself. These office actions can be either non-substantive or substantive. Typically, substantive office actions are more challenging to overcome. Keep in mind that an office action usually isn't a complete rejection of a trademark. That said, failing to respond within the provided time frame will cause the USPTO to abandon application. In other words, the applicant will have to start all over again.

What is a Non-Substantive Office Action?

Non-substantive trademark office actions are usually sent out over technical problems like missing information or procedural errors. Most of the time, applicants can respond to these on their own without legal guidance. Common non-substantive office actions include:

• Misidentified Goods or Services: The USPTO uses a highly specific system to classify goods and services. It's not uncommon for non-attorney users to select the wrong one, in which case they'll issue an office action requesting its correction.
• Disclaimers for Descriptive or Generic Words: If generic or descriptive terms are used in a proposed trademark, then the USPTO will require a disclaimer stating that the applicant makes no exclusive claims to using them.
• Inadequate Specimens: A real world example of the trademark, known as a specimen, is required as a part of the application process. If the initial specimen is missing or found to be insufficient, then the USPTO will send a trademark office action requesting a new one.

What is a Substantive Office Action?

Substantive office actions are significantly more difficult to deal with than non-substantive office actions. Usually, a trademark attorney's assistance is needed to clear these office actions and advance through the application process. Most substantive office actions are issued for one of two reasons: because of mere descriptiveness or because it's "confusingly similar" to a trademark already actively registered with the USPTO.

• Confusingly Similar: A confusingly similar trademark can't be registered because it's too close to one that's already active with the USPTO. It doesn't have to be an exact match, either. The examining attorney just needs to believe that the average consumer could be reasonably confused by its presence on the market. This is known as a Section 2(d) refusal.
• Merely Descriptive: Also known as a Section 2(e)(1) refusal, the USPTO does not allow trademarks that are merely descriptive. An example of this would be trying to trademark "Vanilla Air Freshener" for a vanilla-scented air freshener.

How Can Trademark Office Actions Be Avoided?

The best way to keep an office action from slowing down a trademark application is to work with a trademark attorney from the start. Their expertise and first-hand experience can help overcome the various obstacles faced when applying with the USPTO, bringing you that much closer to a successfully registered trademark. Law firms like ours offer many other services that can make life easier for trademark owners both before and after registration has been completed. Contact us now to find out more.

Contact our Tampa and St. Pete offices now to schedule your consultation with one of our experienced and reliable intellectual property attorneys.

An Office Action is a letter from the USPTO examining attorney that raises questions or objections about your trademark application. Receiving an Office Action doesn’t mean your application is rejected—it means additional information or argument is needed to clear the way for registration.

Types of Office Actions

• Non-substantive: Procedural issues like missing signatures or fees.
• Substantive: Legal refusals such as likelihood of confusion with existing marks or descriptiveness.

How to Respond Effectively

• Expert legal analysis to understand the examiner’s concerns.
• Strategic preparation of arguments and evidence.
• Compilation of supporting documents such as specimens of use.
• Direct communication with the USPTO to resolve issues.

Contact our Tampa and St. Pete offices to schedule your consultation and get professional assistance with your Office Action response.