Trademark Office Action: What Is It & What to Do Next

What is a trademark office action from the USPTO & what should you do when you receive one? Check out our full guide & take action today!

March 14, 2023
Carlos Serrano
4 minute read
Trademark Office Action: What Is It & What to Do Next
Carlos Serrano
Written by Carlos Serrano
Written byCarlos Serrano
Updated September 28, 2023
Edited by Alexis Konovodoff
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You have your trademark application complete and in the works. All you’re doing now is sitting back and waiting to hear from the United States Patent and Trademark Office (USPTO) to know that it’s been registered. Unfortunately, instead of good news, you get a letter from the agency, and it’s a trademark office action. At first glance, it seems full of legalese and jargon, but you’re afraid that your application might be rejected outright. 

The good news is that you do not have to panic immediately. A trademark office action does not mean you wasted time and money on your application. It just means that you need to put in a little extra work to ensure everything goes smoothly. Read our guide below to understand what you need to know about office actions.

What is a trademark office action?

A trademark office action is official documentation, typically a letter, sent to applicants by the USPTO when an examining attorney has an issue or a question about the former’s application.

These letters will explain why the registration is being refused or what requirements haven’t been met. If the office action is issued because your application didn’t meet the requirements, then the examining attorney will suggest how you should proceed. You typically have six months to reply to an office action from the date it’s issued. Otherwise, the USPTO will abandon the application, your fee won’t be refunded, and your mark won’t be registered.

Consider consulting with an attorney if you receive an office action, as they can have significant legal consequences.

There are generally two types of office actions, non-final and final actions. 

What is a non-final office action?

A non-final office action is the first communication attempt when raising an issue for the first time. You can respond to the examining attorney.

What is a final office action?

A final office action is a letter sent by the USPTO that serves as a final warning about legal problems with your application. The USPTO only sends final office action letters if they’ve already sent a non-final office action letter.

A final office action is your last chance to respond to the USPTO, which typically means either complying with all requirements highlighted in the office action or making an appeal to the Trademark Trial and Appeal Board (TTAB).

When can an office action be made final?

An office action can be made final when an applicant fails to address or overcome all issues shown in a non-final office action. 

What does a trademark office action mean?

A trademark office action means an examining attorney from the USPTO reviewed your trademark application and identified problems. 

More than 60% of trademark applications receive some type of trademark office action, including those from lawyers, individuals, and third-party service providers. It’s not an uncommon event and should not be a cause for panic. 

Why have I received a trademark office action?

There are several reasons why you received a trademark office action, and they should all be stated in the documentation you receive from the USPTO. Some of the most common reasons include: 

  • Your trademark application contains errors, such as failing to submit a proper specimen of your trademark.

  • You’re attempting to register a descriptive or geographic name, or any other item that can’t be trademarked.

  • Your mark shares enough similarities with another trademark that the USPTO believes there’s a likelihood of confusion between the two. This can be especially likely if the two marks would be used with the same class of goods or services.

What should you do after receiving an office action? 

You can take certain steps after receiving an office action to ensure your response is sent appropriately and in a timely manner. 

Step One: Stay Calm

Yes, receiving a trademark office action can be a little distressing, but it usually doesn’t mean it’s the end of your trademark application. Take a breather and read through the office action calmly and thoroughly.

Step Two: Identify the Cause of the Office Action

Luckily for you, a trademark office action won’t leave you guessing. Your letter will include all the reasons why the USPTO held up your application. Go through each of those reasons. If it helps, consider transcribing everything onto a different document as a list. This can help keep you on track as you work to address each issue. 

Step Three: Work on Your Response

Although you typically have six months to respond to a trademark office action, there’s no reason for delaying. The quicker you respond, the faster your trademark registration will be processed. Remember also that failing to respond to an office action by the deadline will result in the USPTO abandoning your application. 

Some trademark office actions highlight simple problems that you can address fairly easily. You might just need to submit a different specimen, for example. More complex issues, however, require more attention to detail. 

As we are not a law firm, we can’t offer legal advice and can’t represent you before the USPTO. This means that you should seek the assistance of an attorney for office actions that might require a legal argument, such as a case of likelihood of confusion. 

There are some office actions that don’t require legal arguments, however. If the USPTO suggests changes, and you’ve already decided on your own that you’d like to accept them, we offer trademark office action response services.

If you’ve received a trademark office action that necessitates the following, we may be able to offer filing assistance: 

  • Disclaimer request

  • Missing non-profit documentation or use of names, foreign words, or symbols

  • Movement to the supplemental register

  • Changes to the description or class assignment where the USPTO provides guidance on which class or description to use

  • Request for a replacement specimen where the USPTO provides guidance on what they want to see

Respond to Your Trademark Office Action

What is an Office Action from the USPTO: Final Points

Office actions are a fairly common occurrence during the trademark application process, and the USPTO typically offers detailed explanations of what you need to address in order to keep your application running smoothly. Although we may not be able to provide help in legal matters, Trademark Engine is available for certain trademark office actions responses, so you don’t have to go at it alone.

Trademark Engine is not a law firm and none of the information on this website constitutes or is intended to convey legal advice. General information about the law is not the same as advice about the application of the law in a particular factual or legal situation. Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation.

Trademark Engine cannot and does not guarantee that an application will be approved by the USPTO, that a mark will be protected from infringement under common US trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome. If you want or have an interest in obtaining legal advice with respect to a specific situation or set of circumstances, you should consult with the lawyer of your choice.

Originally published on March 14, 2023, and last edited on September 28, 2023.
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