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Trademark Office Actions

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A trademark office action is a notice sent from the United States Patent and Trademark Office to a trademark registration applicant. An office action occurs when there’s an issue with a requested trademark or the application itself. Most office actions require a response from the applicant in order for the application to move forward.

Trademark office actions can be tough to grasp, so we’ve answered common questions about them here.

Types of Office Actions
Responding to Office Actions
Office Actions FAQs

Types of Trademark Office Actions

There are several broad types of trademark office actions: procedural, substantive, nonfinal, and final. At their core, these all do the same thing—refuse your trademark application. Refusal might sound scary, but office actions don’t necessarily mean your trademark is a lost cause.

To understand the severity of the office action in question, you first need to understand the type of action you’ve been issued.

Note: The USPTO won’t include the words “procedural” or “substantive” in your letter. These are words we (and pretty much everyone else) use to better categorize office actions.

Procedural Office Actions

Procedural office actions usually relate to errors and omissions within the trademark application. Common mistakes that can lead to procedural office actions include:

    • Missing or incorrect applicant information. For example, if there’s a typo in the business’s name.
    • Not including a disclaimer. A disclaimer states that you do not claim rights to certain common or descriptive words/images in your mark. Some trademark applications need to include a disclaimer.
    • Including an invalid specimen (or no specimen at all). All use in commerce trademark applications must include examples of the mark being used alongside the goods/services it promotes.
    • Listing the wrong trademark class. Trademark applications must correctly identify the class(es) of goods/services a mark is promoting.

Substantive Office Actions

A substantive office action occurs when the USPTO identifies an issue with a requested trademark. Substantive office actions often require legal arguments to resolve. Two common substantive refusal reasons are “likelihood of confusion” and “merely descriptive.”

    • Likelihood of Confusion. Likelihood of confusion means the USPTO has determined consumers might confuse your mark with a previously registered mark. For a likelihood of confusion to exist, there must be overlap between the marks and between the goods/services promoted by the marks.Let’s say you’re trying to trademark a business name, Skyline Arborists, for your tree trimming and removal business. If Skyline Landscapers is already trademarked, this could result in a likelihood of confusion, since tree maintenance and landscaping are related industries.
    • Mere Descriptiveness. If the USPTO decides a mark is merely descriptive, that means the mark closely describes the goods/services it promotes. (The USPTO isn’t keen on this.) If a car repair shop called Auto Repair tried to trademark their business name, it would likely be refused on merely descriptive grounds. A car repair shop called Fixin’ Brakes & Motors could be labeled merely descriptive since the mark describes basic functions of the service.

Nonfinal and Final Office Actions

As procedural and substantive office actions move through the examination process, they will be labeled as either nonfinal or final by the USPTO.

    • Nonfinal office actions point out an issue with an application/trademark for the first time.
    • Final office actions address an issue with an application/trademark for the last time. Receiving a final office action means you didn’t adequately respond to a nonfinal office action. Responding inadequately to a final office action results in an abandoned application unless you file an appeal with the Trademark Trial and Appeal Board.

Learn more about our Trademark Service, which includes responses to procedural office actions.

Responding to a Trademark Office Action

Responding to a trademark office action can be a complicated process that often calls for the help of a trademark attorney.

Office actions are filled with legalese and jargon—experienced trademark attorneys know how to interpret office actions, research potential solutions, and respond with the legal arguments and case law that may be necessary to appease the USPTO. Learn more about how our attorneys can help you through this process.

For those who decide to travel the office action road alone, the most important word in your vocabulary is “deadline.”

How do I respond to an office action?

To respond to a trademark office action, first identify the nature of the refusal. It can be as simple as correcting a typo, or as complex as writing a legal argument about why the USPTO incorrectly issued a “likelihood of confusion” refusal.

The letter from the USPTO will include instructions for how to respond. You will likely submit a response via the Trademark Electronic Application System (TEAS), though you may have the option to respond by phone, email, or mail.

How long do I have to respond to a trademark office action?

Office action responses are typically due within six months of the notice’s issue date. However, sooner deadlines may apply. The office action letter will provide a deadline.

What if I miss the office action response deadline?

Don’t do it! Responding to an office action outside the given time frame can lead to the USPTO abandoning your application. When this happens, you have two choices if you wish to continue with registration:

    • File a Petition to Revive, pay $100, and assert that the response failure was unintentional
    • Start the application process over from the beginning

Trademark Office Action FAQs

How does the office action process work?

After a trademark application is filed, it lands on the desk of a USPTO examining attorney. The attorney reviews the application, noting any errors, omissions, or other legal issues. Any issues will be cited as “refusals” in a formal office action letter. The letter is sent (typically by email) to the trademark applicant. From there, the applicant (or their attorney) responds. If the examining attorney decides the issues have been sufficiently addressed, the application moves forward. Otherwise, a final office action will be sent, providing the applicant one more chance to respond. If adequate responses are not received, the application will be abandoned.

Do all trademark applications receive office actions?

Not all trademark applications result in office actions, but many do. The probability of receiving an office action goes down if a trademark attorney helps file your application.

Are descriptive marks always refused?

Not always. Descriptive marks (those that merely describe the good/service they promote) can potentially be registered if they’ve been in use for five or more years, or have otherwise acquired “distinctiveness.” (A mark is distinctive if it clearly identifies a good/service as coming from a specific source.)

When are office actions issued?

The USPTO strives to issue a first, nonfinal trademark office action within 2.5 and 7.5 months of an application being filed.

How much does an office action response cost?

The cost to respond to an office action depends on the complexity of the action. The USPTO doesn’t charge fees for office actions, but certain response filings—such as a Petition for Expungement or Reexaminationincur fees as high as $400. But the main costs to consider in regard to office actions are attorney fees. At Northwest, we include procedural office actions in our $249 Trademark Service. For substantive office actions, we refer clients to our law firm, Law on Call, which tackles office actions for $150/hour.

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