How to Respond to A Trademark Office Action

It is likely that you are visiting this page because you have filed an application for Federal Trademark Protection, but after a few months received from the United States Patent and Trademark Office (USPTO) an IMPORTANT NOTICE REGARDING YOUR U.S. TRADEMARK APPLICATION.  This is what is commonly referred to as an “Office Action.”  This kind of notice can be intimidating, but Office Actions are quite common.  This article will help give you some information about what you can do to still succeed with registering your mark.

“RELAX”

As stated above, office actions are quite common and some can be answered in a straight forward manner.  Below you will find some information to help familiarize yourself with an office action and help you respond, or be better informed as to your needs when seeking an attorney to help.

Read the Office Action from the USPTO Carefully

While the purpose of an office action is to clearly state the reasons for denial of registration of your mark, there may be multiple issues which you are required to address in order for you to overcome the denial of registration for your mark.  Some of these issues are more straightforward than others with issues ranging from simply needing to change the way you have described your goods or services, to requiring a legal argument to overcome the Examiners opinion that the mark would result in a “likelihood of confusion” with another registered mark.  There is another reason to make sure you’ve carefully reviewed the entire office action, you must respond to ALL of the reasons raised for denial of your registration when submitting your response.

Make sure you respond fully to all reasons for denial

This is very important.  If you do not respond to the office action completely your mark will not be approved and you will receive another, possibly FINAL, office action.  If you receive a Final office action, it is your last chance to fix any defect, or present arguments in favor of registration before you would need to appeal the refusal to the Tradeamrk Trial and Appeal Board. If you do not respond to an office action at all, your application will be deemed abandoned, and you will lose any priority filing rights in your trademark.

Common Types of Denials

Office actions are issued for a variety of reasons.  Some are administrative in nature, while others are substantive.  Below is a list and short description of some of the common types of denials for registration given by the United States Trademark Office.

Descriptiveness

A refusal for descriptiveness means that the USPTO finds that your trademark “merely describes” what your product or service does or is about.  A good example would be trying to register the mark “Super Sharp” as the name of the kitchen knives you are selling.  If a descriptiveness refusal is issued, there are two ways to overcome it.  First would be demonstrating that your mark has “acquired distinctiveness” or  gained “secondary meaning” in the marketplace.  In other words it would have to be demonstrated to the Examining Attorney that your trademark is better understood to indicate you as the source of the goods or services than the common meaning.  In the above example that means when consumers heard “super sharp” they would need to associate that with the BRAND of knives, more so than thinking that super sharp knives are good to have.  It generally takes being able to demonstrate 5 years of use of a mark or significant amounts of money spend in advertising and marketing if it has been less than 5 years to be able to claim “acquired distinctiveness.  If you don’t have this long-term usage or promotional expenditures to overcome this type of rejection, there is still something you can do, which is moving the filing to the Supplemental Register.  Be aware, however, that only marks that are actually being used can be amended to the Supplemental Register.  

Specimen refusal

Sometimes the USPTO has found that the “specimen” or “evidence” showing use of your mark that was submitted doesn’t meet their requirements.  There are several types of trademark application filings, one of the most common being a filing based on “actual use” of your mark in commerce.  In these types of filings you are required to submit a specimen or evidence showing the mark you want to register is being used in connection with your applied for product or service.  Filing the correct specimen is crucial to successfully registering your mark, as the USPTO will not issue a registration certificate until you have satisfactorily shown your are using the mark.  This can sometimes be a tricky and confusion endeavor, so if you are not sure about what constitutes a correct specimen you should consult an attorney.

Definite Identification of goods or services

It is important to keep in mind that trademark rights do not grant you protection against uses by all other businesses.  When you file your mark, you are required to describe the goods and/or services which you offer.  It is important to get this description correct, and in a manner that reasonably (and actually) covers all of the items or services you provide.  Writing this description with indefinite language can trigger a rejection from the USPTO.  Simply put, the government will allow you to register your mark for the business you are in, but it also wants to make sure it still preserves rights for others in businesses you are not in.  There is a balance here, and an experienced attorney can help guide you to the right description.

Conclusion and help

Don’t let the letter from the USPTO with their ALL CAPS language scare you.  Office Actions are common and commonly overcome.  Understanding the process and the reasons behind the issues can go a long way to reducing the anxiety created by the unknown and the fear of losing your mark.  Some administrative rejections can be quite simple and easy to overcome.  An experienced attorney can review your office action, explain fully what the Office Action means for you, and even file your response.


These articles provide general information about our practice areas.  If you are looking for assistance specific to your situation, you must contact an attorney.

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