What Is a Trademark Office Action?
After you file a trademark application, the USPTO assigns it to an examining attorney who reviews it for compliance with trademark law. If the examiner identifies any issue, whether substantive (a legal refusal) or procedural (a technical requirement), they issue an Office action setting out the problem and requiring a response within three months, extendable to six months for a fee.
If no response is filed by the deadline, the application goes abandoned. If a response is filed but doesn't adequately address the refusal, the examiner can issue a final refusal. Understanding the type of refusal you've received and the strength of potential responses is essential before deciding how to proceed.
Types of Trademark Office Actions
Office actions generally fall into two categories. Administrative office actions raise procedural issues that are usually straightforward to fix, things like an unclear identification of goods and services or a technical problem with the specimen of use. Substantive office actions raise legal refusals that require legal argument, evidence, or both to overcome.
The most common substantive refusals are addressed on their own pages below. Each one involves distinct legal standards, different types of evidence, and different odds of success depending on the facts.
- Likelihood of Confusion (§2(d)) — the most common refusal, based on similarity to an existing registered mark
- Merely Descriptive (§2(e)(1)) — the mark describes a feature, quality, or characteristic of the goods or services
- Geographic Descriptiveness (§2(e)(2) / §2(e)(3)) — the mark is primarily a geographic term
- Primarily Merely a Surname (§2(e)(4)) — the mark is primarily perceived as a last name
- Functionality (§2(e)(5)) — the feature or design sought to be registered is functional
- False Suggestion of a Connection (§2(a)) — the mark falsely implies an affiliation with a person or institution
- Specimen / Use in Commerce — the submitted specimen does not adequately show use of the mark in commerce
What Happens If You Don't Respond
If a response is not filed within the deadline, the USPTO issues a notice of abandonment. An abandoned application can sometimes be revived, but revival is not guaranteed and involves additional cost and delay. More importantly, abandonment can affect your priority date and leave your brand in a legally exposed position. The best course of action is to assess the refusal promptly and decide whether to respond before the deadline passes.
How Five Dogs Law Handles Office Actions
Jared's first step is always an honest assessment of the refusal. Not every office action is worth fighting: the probability of success, the cost of the response, and the commercial importance of the mark all factor into the decision. Jared will give you a clear-eyed view of your options and what each will cost before any work is undertaken. If you decide to proceed, the response is drafted and filed for a flat fee with no surprises.
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