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What is a Trademark Office Action

After filing a trademark application, the United States Patent and Trademark Office (USPTO) may decide to halt the progress of your application and document the reasons for doing so in an official letter known as an Office Action. Critically, Office Actions are not necessarily final rejections and if the legal issues, whether procedural or substantive, are addressed in your response to the Office Action, your trademark application will proceed. Obviously, having a top trademark lawyer with a deep understanding of trademark law and experience in filing office actions is essential. As trademark law is complex, there are a variety of prospective reasons Trademark applications may be rejected.  Procedural reasons usually involve relatively minor issues (the name of the applicant is incorrect, bits of necessary information are missing or in conflict etc.) while substantive reasons are often more challenging to overcome and require legal arguments to overcome to the trademark examiners objections.

How To Respond To A Trademark Office Action: It All Starts With Filing a Trademark With The USPTO

A trademark may be a word, slogan, logo, sound, motion – any symbol which when attached to a good or service, distinguishes the good/service from competitors and enables consumers to immediately recognize the source of the good/service sold. In order to file a trademark application with the United States Patent and Trademark Office (USPTO), the applicant must provide various pieces of information within the application including;

  1. The contact information of the applicant
  2. The legal status of the applicant (a person or business entity)
  3. The nature of the trademark (is it a word, design, slogan, or sound/motion trademark)
  4. The description of the Trademark
  5. The class of goods/services to which the Trademark will be assigned
  6. A description of the goods/services
  7. A specimen showing use of the goods/services in commerce
  8. A statement of first use of the trademark, both generally, and in commerce
  9. An indication that the Application is an Intent-to-Use if the mark has not yet been used in commerce

After the entire trademark application has been filled out, the applicant submits it along with the required fee (typically $275 or $225 per class of goods) and waits anywhere from 3-5 months to hear back from the USPTO with either a confirmation that the trademark is acceptable or with a Trademark Office Action, detailing why the trademark is unacceptable and the corrective measures that must be taken to amend the trademark application. Critically, refusals are not going to always be overcome. Still interested? Keep reading.

Trademark Office Actions: Substantive vs. Procedural Issues

What most people don’t fully appreciate about the USPTO is that there are real live trademark examiners going through each and every application and while they do their best to create uniformity across all decisions (to either accept or refuse trademark applications), ultimately, the examiners are just people and two different trademark examiners might very well reach different conclusions about the viability of the same trademark application. Principally, there are two main types of office actions; Procedural Trademark Office Actions and Substantive Trademark Office Actions.

Procedural Trademark Office Actions

Procedural Trademark Office Actions are those which require the applicant to make fairly simple amendments to the application and typically involves things like fixing incorrect information about the applicant (perhaps the company is an LLC even though the application is listed as a Corporation), and/or “disclaiming” the rights to one of the words in the trademark.

The purpose of the disclaimer is very often misunderstood but is nevertheless a powerful way to obtain trademark protection on marks that would otherwise not be admissible due to descriptive or generic prohibitions (descriptive and generic marks are not eligible for trademark protection). Imagine for the moment that you plan on launching a new BBQ restaurant and want to call it, Sebastian’s BBQ. Naturally, you should not be able to stop another person from using the word BBQ in his restaurant name (that wouldn’t be fair!) and but you should be able to obtain proprietary rights to the use of the word BBQ, ALONG with the word, Sebastian’s. Thus the fundamental purpose of the disclaimer statement is to concede that other businesses also have the to use the disclaimed word (e.g. BBQ) in their trademarks. If you did not disclaim one of the words in your trademark application when it was initially submitted, the trademark office action may require you to add a disclaimer statement to your application.   More specifically, you may have to provide a response to an office action, which includes a Disclaimer Statement if your desired trademark is;

  1. Descriptive
  2. An Informational Word
  3. Laudatory (words which describe how great something is)
  4. A Well-Known Symbol
  5. Geographic
  6. Deceptively Misdescriptive

This is not necessarily a full and comprehensive list but covers the meta-idea of the types of things, which need to be disclaimed. Critically, in the event that the applicant voluntarily provides a disclaimer but did not need to issue the disclaimer, the disclaimer may be withdrawn.

Substantive Trademark Office Actions

Substantive Trademark Office Actions are more challenging to overcome than procedural trademark office actions and require the applicant to provide a written response, which answers the substantive problems outlined by the USPTO trademark examiner.


Substantive Trademark Office Actions

Section 2(d): Likelihood of Confusion Refusal

Perhaps the most common type of substantive trademark office action is the Section 2(d) Likelihood of Consumer Confusion Refusal. Here, the trademark examiner has searched the USPTO database for registered trademarks and has discovered a trademark (or several trademarks) with a sufficiently similar set of goods/services to the applicant’s so as to (conceivably) cause consumer confusion and therefore render the newly applied for trademark inadmissible. Importantly, for a consumer confusion rejection to be triggered, the trademark examiner does not need to show that the marks are identical but rather that they are simply confusingly similar. You might very well be wondering, who’s to say what qualifies as “Confusingly Similar”? That is a very good question and the job of the trademark attorney who files the response to your trademark office action will make the case that consumer confusion would not arise for reasons xyz.


How to Respond to a Trademark Office Action 2(d) Refusal

Remember, there are two steps that must be made to marshal the Likelihood of Consumer Confusion Refusal; The first is that the trademark itself is sufficiently similar to an existing trademark and the second step is that the associated goods/services of the two marks are sufficiently similar. Can you poke a hole in either of these charges? For instance, it may be true that the marks are very similar but the goods/services are really not all that related. Thus, a good response to a trademark office action anchored in a Likelihood of Confusion refusal will articulate how/why the marks differ and how/why the goods/services are distinguished and unrelated so that consumer confusion will not occur. In the event that such an argument cannot reasonably be made, the applicant has two additional recourses to consider.

The first is simply to alter the goods/services initially applied for in the trademark application and restrict them to a very narrow application. The second option (though a more challenging route) is to obtain consent from the cited trademark registrant to use the trademark and agree that no likelihood of confusion exists. Here, the applicant will submit a consent agreement, which states the registrant’s consent to use of the mark and his belief that no consumer confusion exists.


Section 2(e): Descriptiveness Refusal

Remember, Trademark rights exist along a spectrum of distinctiveness. The more distinct the trademark, the more eligible for trademark protection (and the greater the strength of that protection). The less distinct the trademark (either due to genericism or descriptiveness), the less eligible for trademark protection. When a Trademark Office Action is anchored in a Descriptiveness Refusal, the trademark examiner is alleging that the trademark merely describes the nature of the goods/services outlined in the application and is therefore not sufficiently distinct to warrant exclusive trademark rights. For example, a company that sells light bulbs would not be able to obtain a trademark on “Bright Lights” because the trademark, Bright Lights, is describing the product that the company is selling.


How to Respond to a Trademark Office Action 2(e) Refusal

Principally, the trademark attorney responding to the office action will need to make a case that the mark is not, in fact, descriptive of the goods/services listed in the trademark application. Typically, the response to the office action will argue that while the trademark may seem descriptive, it is in fact only suggestive and therefore is eligible for trademark protection. The difference between a suggestive trademark and a descriptive trademark is rather hazy but centrally, suggestive trademarks require more thought and imagination from the observer of the trademark to hypothesize the goods/services sold while descriptive trademarks require much less imagination. This is a powerful argument indeed if articulated properly.

Even if the trademark is absolutely descriptive, the applicant still has several routes of recourse available to him. The first is claiming that the trademark has obtained secondary meaning, or acquired distinctiveness, under Section 2(f). Here, the response to the trademark office action will concede that the trademark is descriptive however, the argument will suggest that the trademark has been used with such regularity and frequency that this otherwise descriptive mark has accrued secondary meaning. That is to say, the trademark has acquired distinctness in the eyes of the consumer and now serves as a unique source identifier for the company using it. It is not always easy to establish secondary meaning.

Secondly, the applicant also has the option of amending the trademark application to the Supplemental register. The Supplemental register is the second tier Trademark Register (in contrast to the principal register) and is designed to allow descriptive trademarks to be listed that would otherwise not immediately qualify to be listed on the Principal Register. While not as powerful as a trademark listed on the Principal Register, trademarks that are listed in the Supplemental Register still allow the registrant to use the registration symbol ®, bring suit in federal court to stop infringement, use the registration as a preliminary basis for registration in other countries, and protect against the registration of confusingly similar trademarks that would otherwise be barred by the likelihood of confusion test.

Notably, marks that are Generic, or wording and designs that are the common name of the goods/services listed in the application are never eligible for trademark registration and cannot be listed on the supplemental register.

Miscellaneous Trademark Office Actions

Specimen Refusals

Trademark Office Actions will often also be rooted in problems that are neither quite substantive nor explicitly procedural but rather some sort of hybrid of the two. Specimen refusals are a good example of this. Remember, when filing a trademark office action, the applicant must demonstrate to the USPTO that the mark is being used in commerce (unless filing an Intent-to-Use application). In order to demonstrate that the trademark is being used in commerce, the applicant must submit a specimen, or record of proof that that quite literally shows the mark being used in commerce. A quick note on the Use In Commerce requirement – the USPTO has never come out with an exact number of sales that must be made before the applicant can claim that there is “Use” however trademark doctrine does call for “Bona Fide” use, rather than “token” use. For example, selling a single T-shirt to a friend would constitute token use rather than Bona Fide use and would therefore not qualify as “Use in Commerce.” Conversely, selling 1000 T-Shirts to different customers across the country is illustrative of Bona Fide use and therefore would satisfy the Use in Commerce Requirement.


Proper Specimen for Goods


Remember, the USPTO wants to see that your mark is really being used as a source identifier and you therefore need to show your mark tethered to a good in a meaningful way so that consumers come to associate your trademark with the good. Proper specimens for goods include:

  1. Product tags/labels which, show the trademark prominently displayed
  2. Product packaging which, show the trademark prominently displayed
  3. An image of the product itself with the trademark prominently displayed
  4. A screenshot of an e-commerce page of the applicant’s website or a screenshot of an Amazon page which prominently displays the trademark near the product sold


Proper Specimens for Services


Providing a specimen for a trademark application that covers a service may seem a little more abstract (there is no product to attach the good to) but the USPTO still offers a variety of options of appropriate specimens. Proper specimens for services include:

  1. Brochures
  2. Leaflets
  3. Letterheads on advertising material specifically referencing the designated service
  4. Internet Advertising
  5. Print Advertising

The trademark examiner might determine that the submitted specimen does not sufficiently show how the trademark is used in commerce and in order to respond to a trademark office action anchored in a specimen refusal, the applicant will need to submit an additional specimen (of the sort previously mentioned), which does illustrate the mark being used in commerce. A very common problem is that the applicant has submitted a trademark in the application, which actually differs from the representation of the trademark as it is used in commerce. Similarly, applicants often mistakenly submit a mock-up of the “proof” (perhaps an image of what a product’s packaging may look like in the future with the trademark) but not actual evidence of that packaging being sold in commerce. Lastly, applicants very often submit what they believe to be a proper specimen showing the trademark being used, as a trademark, but in fact, the mark is (in the opinion of the trademark examiner) perceived by consumers to be informational in nature. That is to say, the trademark examiner may argue that the trademark does not quite operate as a trademark – it does not serve as a source identifier. Instead, the “trademark” is somehow descriptive.


How to Respond to a Specimen Refusal


First and foremost, the applicant should review the list of acceptable specimens listed above and make sure that the substitute specimen is acceptable. Next, when responding to the office action, the applicant should offer a clear and thorough explanation of what precisely the newly submitted specimen consists of and how in fact it is being used in commerce. The applicant should focus on the nexus between the specimen (proof of use) and the goods/services listed in the application – if the nexus is not strong enough, the specimen will not be accepted. Ultimately, an acceptable specimen must provide evidence that the mark is used in connection specifically with the goods/service listed, serve as a functional source identifier, and provide a matching trademark to the one listed in the application.


Amendments to Goods/Services


Similar to Trademark Office Actions based on unacceptable specimens, many Trademark Office Actions are sent to address problems with the Goods/Services listed. Specifically, in the event that the trademark examiner believes that the trademark is indefinite, vague, or excessively broad, the application will be rejected. Generally, the trademark examiner will provide an explanation as to why the identification of the Goods/Services is unacceptable along with a suggestion of how to amend the Goods/Services. Trademark Attorneys want to make sure that the listed Goods/Services are written in “plain english” and if the description of the Goods/Services consists of industry jargon that is so idiosyncratic as to make the description non-understandable, the examining trademark attorney will request an amendment.

Dates Matter: When You Need to File a Response to the Trademark Office Action

Keep Your Eyes on the Six Month Mark

The USPTO is a stickler for being on time.  In the event that the Trademark examiner issues an office action, the applicant must submit a response to the office action, accounting for ALL of the stated legal issues, within six months of the issuance of the action.  In Office Actions that raise both procedural and substantive issues, this can be particularly confusing.  Please discuss each issue carefully with a trademark lawyer to get a sense of the scope of the response needed and how much preparation will be required to draft and submit the response.

The USPTO is not entirely unforgiving and if you happen to miss the 6-month period, you may be able to request an extension of time to submit your response.  You can expect the USPTO to charge an extra fee for granting this time allowance.

How to File a Response to a trademark Office Action


Step 1:  Speak With Someone at the USPTO

The USPTO has quite a good team of administrators and associates who can answer certain fundamental questions surrounding your application.  Notably, they cannot and indeed will not offer any sort of legal advice but if you have any technical or administrative issues, they can typically point you in the right direction.  For any substantive questions, please speak with your trademark lawyer who can if need be, contact the trademark examining attorney on your behalf.


Step 2: Contact a Trademark Lawyer

Trademark office actions can be complex and you should first speak with a top trademark lawyer to discuss the nature of the legal objections raised in your trademark office action.  It may very well be the case that the trademark attorney feels that he can clear it all up with a quick (and persuasive) phone call to the examiner.


Step 3: File the Response to the Trademark Office Action through TEAS

Fortunately, the USPTO relies on a fairly efficient, online platform called the Trademark Electronic Application System (TEAS) to manage the various correspondences surrounding the issuance and response to the trademark office action. Assuming your application is eligible to be processed through TEAS, your trademark lawyer will be filing all correspondences through it.


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Guidelines for Responding to Trademark Office Actions

Remember, every single office action is unique and is responsive to specific issues that are problematic to the particular trademark application. Fundamentally, there are two types of trademark office actions; Substantive Trademark Office Actions and Procedural Trademark Office Actions.  Make sure your response to the trademark office action accounts for both.

  1. Read the Office Action Very Carefully
  2. Discuss the Office Action With a Trademark Lawyer
  3. Ensure the Response to the Office Action Deals With Both the Substantive and Procedural Problems
  4. File a Response to the Office Action Within the 6-Month Period

How to Respond to a Trademark Office Action? Don’t Go It Alone

Trademark Office Actions can be seriously complicated and involved. Please Contact a Trademark Lawyer to discuss your case.

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