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USPTO Office Action Response

If you received an Office Action to your trademark application, we may be able to help you. Don’t delay. Starting at $399

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Responding to Office Actions

An examining attorney will issue an office action when they find an error or other legal deficiency in your trademark application. The issues raised in an Office Action have to be addressed or you risk the abandonment of your registration. Pursuant to your request, a Swyft Legal attorney will review your office action to help you determine the best course of action for your trademark registration. Whether you have a simple clerical matter to be corrected, or you need a legal argument submitted, don’t delay and act today.

Provide us some basic information about your mark

Your information and Office Action is reviewed to confirm engagement

You will sign off on the response a few days later


Receive an Office Action? It’s OK. We May Be Able to Help.

Over 60% of trademark applications receive Office Actions from the USPTO. Although it may seem distressing, it doesn’t have to be. Many Office Actions can be cleared up with some clerical fixes and agreeing to some changes proposed by the USPTO. You shouldn’t give up your application because of this hurdle.

Office Action Responses$399
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Simple Process

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Review and Preparation

If eligible, your information will be reviewed and a response will be composed.

Consult and Approve

You will consult with your attorney and approve the response for filing.

Office Action Filing FAQs

Still have questions? Call 1 (877) 721-4579 with us for real-time support.

What is an Office Action?

“Office Action” is the term the UPSTO uses when it has an issue or a question about a trademark application. The examining attorney within the USPTO typically sends an Office Action to notify an applicant about issues with his or her application. The letter will most often include the reason why registration is being refused or what requirements need to be satisfied. In most cases, an applicant must respond to an Office Action within three months from the date the Office Action is issued or the USPTO will abandon the application, the application fee will not be refunded, and the mark will not register. An office action may have important legal consequences and you should consider consulting with an attorney about the appropriate response.

There are generally two types of office actions:

  1. Non-final actions: This type of Office Action raises an issue for the first time and a response can be made to the examining attorney.
  2. Final actions: This type of action issues when the applicant’s response to the prior Office Action fails to address or overcome all issues. An applicant’s response to final Office Action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.
What is the significance of an Office Action asking the applicant to move the application to the Supplemental Register?

Most people initially apply for a mark to be on the Principal Register. The Supplemental Register is another option. A descriptive mark, a surname or a geographic term, may be more appropriate for the Supplemental Register. Often times, the USPTO will issue an Office Action suggesting filing on the Supplemental Register instead of the Principal Register.

According to the USPTO, on the Supplemental Register, you can still:

  • Use the ® symbol
  • Put others on notice that you are already using the mark
  • File a trademark infringement suit in federal court
  • Prevent others from obtaining confusingly similar marks from the USPTO - even on the Principal Register.

Unfortunately, a company with a mark on the Supplemental Register may not the presumed owner of a valid mark if there is a lawsuit. A Supplemental Register mark generally cannot be used to prevent the importation of counterfeit goods. Finally, Supplemental Register marks are generally not eligible to become incontestable like a mark on the Principal Register can. However, if a mark obtains secondary meaning, the owner can refile for acceptance on the Principal Register even if they first filed on the Supplemental Register.

What is the significance of an office action that asks an applicant to “disclaim” part of the trademark?

A mark is often (but not always) a group of words with one or more of them describing the product (e.g., tires) or it may be merely descriptive (e.g., great). While it may be appropriate to register the mark as a whole, the USPTO may question an attempt to claim some of the individual product or descriptive terms. Thus, some companies decide to disclaim those words without giving up on registering the mark as a whole or the USPTO may ask an applicant to do so after the fact.

The disclaimer does not remove the unregistrable part of a mark or affect its appearance. A disclaimer appears on the USPTO database that lets the world know the company is not making an exclusive claim to that particular part of the mark. Failure to disclaim part of a mark may be cause for rejection. Often times (but not always), the USPTO can issue an Action Letter seeking to disclaim the unregistrable parts of a mark, which may delay the application. At this point, there are generally two options: agree with the USPTO or decide to fight the request to disclaim. Because it may have significant legal ramifications on the protections associated with the mark, consider consulting with an attorney after receiving an Action Letter with a request to disclaim part of a mark.

The USPTO has published the following examples to illustrate when a disclaimer is likely required:

  1. Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
  2. Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
  3. Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole”
  4. Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
  5. Well-known Symbols: Disclaiming the “$” for a financial services company.
  6. Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
  7. Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. They example they use is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
  8. Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”
What percentage of trademark applications receive Office Actions?

A recent statistic reported that more than 60% of trademark applications receive some type of Office Action. This is from the total population of filings which includes filings from lawyers, individuals and third-party service providers.

What is the deadline to respond to the USPTO Office Action?

In most cases, the deadline is three months from receipt of the Office Action notice from the USPTO.

What if an applicant does not respond to an Office Action?

In most cases, the USPTO treats applications in which an Office Action is not answered as abandoned by the applicant if no response is received within three months. The USPTO filing fee is generally not refunded and future efforts to register the trademark will typically require the applicant to start all over, including payment of new USPTO filing fees.

The law firm responsible for the portion of this page constituting an advertisement is Swyft Legal, LLC who can be reached at [email protected]. Swyft Legal, LLC is licensed by the Arizona Supreme Court under license number 70173. All legal services provided in connection with the attorney-led trademark process are provided by Swyft Legal, LLC. Trademark Engine is an affiliate of Swyft Legal, LLC.

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