Office Action and the Trademark application

On a trademark application, a “Office Action” is an official “action” issued by the United States Patent and Trademark Office. A trademark applicant is usually required to respond within six months to correct an error with their application or to respond to a more significant refusal.

After a federal trademark application is filed in the United States, it takes three to four months to reach an examining attorney. The examiner at the USPTO will then decide whether the application meets all of the requirements for registration. The examining attorney will issue an Office Action if it does not.

The most common types of Office Action are:

Substantive Issues

Significant refusals are more significant Office Actions that indicate a problem with the trademark’s content. These rejections are not always surmountable, and it is best to work with a trademark attorney to ensure that the application has the best chance of survival.

Likelihood of confusion – Section 2(d)

A Section 2(d) rejection, or likelihood of confusion refusal, is one of the most prevalent substantive refusals. If the USPTO considers your trademark application is too similar to an existing trademark registration in terms of appearance, impression, or phonetics, they will issue a 2(d) “likelihood of confusion” refusal. Because trademarks exist to function in the marketplace, eliminating commercial confusion is one of the USPTO’s top concerns. If your application is too similar to a registered mark, customers will be confused and your application will be denied.

These refusals can be difficult to overcome, and the applicant may be forced to file for a new trademark. However, getting around a 2(d) denial is not impossible, and it can be done by filing appeals with the USPTO, asking for the decision to be reconsidered. Additionally, if the existing registration is no longer in use or has other underlying flaws, contesting the validity of the trademark that may be obstructing yours can be beneficial.

Merely descriptive – Section 2(e)(1)

A Section 2(e)(1), often known as a purely descriptive denial, is another typical substantive refusal. This Office Action indicates that the examining attorney has found that the applied-for mark is only a description of the products and services it would cover, and thus lacks the distinctiveness required for registration. These refusals can be avoided by modifying the applications to register on the Supplemental register rather than the Principal register, which allows the applicant to keep the circled R symbol and prevents others from registering trademarks that are identical to theirs. Accepting registration on the Supplemental Register, however, may have a major impact on your trademark’s ability to be enforced. Prior to making any decisions, you should consult with an attorney.

Technical Deficiencies 

Office Actions issued as a result of technical flaws in an application are usually simple to resolve. While all Office Actions obstruct the application process, common technological flaws are impediments that can be addressed.

Insufficient identification of goods and services

Frequently, trademark applications contain erroneous or insufficient text defining the goods and services for which the trademark stands. This happens frequently when people try to file trademark applications on their own without the help of an attorney. These inaccuracies are frequently discovered when applications are made by applicants who are based outside of the United States. The USPTO will issue Office Actions to rectify stated insufficiencies because the wording used to describe products and services in trademark applications is subject to severe rules and standards. The applicant can then make any necessary adjustments or clarifications before submitting his or her response.


The necessity for a disclaimer is another common technical issue that leads to Office Actions. This happens when the examining attorney asks the applicant to disclaim a portion of their trademark because it is overly descriptive or generic. Because of the descriptive character and frequency of the word “Clothing Brand” in commerce, a trademark application for “Josh’s Clothing Brand” may require a disclaimer for “Clothing Brand.” When a request is filed for the entire trademark, the demand for a disclaimer is more serious. It will be extremely difficult for a trademark owner to assert their mark’s rights if they are obliged to disclaim the entire mark.

Improper specimens

A common technical fault for which an Office Action is issued is improper specimens. If you file a trademark application under Section 1(a) of the Trademark Act, or based on “actual use in commerce,” you must submit a specimen establishing the trademark’s use in commerce. The specimen is submitted with a later filing if you file a 1(b) or intent to use application. An Office Action will be issued regardless of when the specimen is given to the USPTO for evaluation if it does not show the trademark being used correctly in the marketplace or in accordance with the classes indicated in the application. More instances of the trademark being used in commerce will be requested from the applicant. The applicant’s best interests are served by submitting this additional evidence under the supervision of a trademark attorney who is familiar with the USPTO’s specimen requirements.

We can assist you!

We handle all aspects of Official Action Response so you may focus on other aspects of your application. In addition, instead of sending formal alerts, we can send individual notifications for each activity, offer reports explaining each action received and filed in each interval, or update a file management system or database. Please visit our service page if you have any additional questions.

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