How to Respond to A Trademark Office Action
So, you filed your trademark application months ago and your new business has started on its way. You are eagerly awaiting to hear from the United States Patent and Trademark Office. After waiting for so long, you finally see an email from the USPTO, only to find out that the USPTO has issued an “office action” and your trademark has been denied.
The good news is that most USPTO office actions (a.k.a. the denial of your application) can be overcome. You have the option of filing a response to resolve the issues found and even talking to the examiner to find a way to get the application refused. This article will discuss exactly how you should respond to an office action.
What is an office action?
To get started, it is important to demystify the USPTO’s jargon. An “office action” is just an official action taken by the USPTO that stops your trademark application from moving forward. The severity of any given office action varies significantly.
Why did my trademark application receive an office action?
Once a USPTO examining attorney has reviewed your trademark application, they may determine that your application does not meet all requirements necessary for federal registration. If that is the case the examiner will issue an office action for your application.
Office actions are typically categorized as either technical refusals or substantive refusals.
If your application has been issued a technical refusal, it just means that there is a technical problem with your application that is preventing it from moving forward. These are relatively easy to fix (especially if you have a trademark attorney who knows his/her way around the USPTO).
Substantive office actions are typically issued if there is concern about the trademark itself, not just technicalities within your application. These office actions are more serious and difficult to work around. In a response to this type of office action, you would have to submit arguments and evidence to the USPTO to refute the refusal and explain why you believe your trademark should register.
As substantive office actions are issued for more serious issues, it’s highly recommended that you respond to these office actions with the help of an experienced trademark attorney.
General tips for responding to office actions.
Office actions are unique to each trademark application, however there are a few general tips to follow if any have been issued against your application.
- Carefully review the office action.
Make sure you understand what response is needed to satisfy the issue(s) presented. - Engage the help of an experienced trademark attorney.
- File your response before the deadline to respond has passed
How to submit your response to an office action.
If your trademark application receives an Office Action, you have a few different ways you can submit your response.
Most Office Action responses should be submitted online using the Trademark Electronic Application System (TEAS). There are two different forms for response, depending on whether your application has received a Final Office Action or a Non-final Office Action.
When submitting an Office Action response online, it is imperative that the correct form is used and that the proper person signs the response. The USPTO will issue a notice of incomplete response if the form is signed by the wrong person. The response will then have to be resubmitted with the proper signature.
If you have engaged the assistance of a trademark attorney, your attorney must sign the Office Action Response. If you do not have an attorney, please follow the USPTO’s guidelines for who can sign a TEAS Office Action response form.
In some cases, a USPTO examining attorney might suggest that the trademark applicant or their attorney reach out to the examiner by phone or email. This typically occurs if the Office Action has been issued for minor technical issues.
Responding to an Office Action by phone or email can help your trademark application move through the registration process a little faster. Please note that any email correspondence will become a part of your application’s record and therefore, be public knowledge.
How to respond to common technical office actions
The USPTO issues technical refusals when they need the applicant to fix something technical in the application. Technical things can include clarifying what goods or services are in your application, disclaiming descriptive words in your mark, or giving a proper address, etc.
1. Responding to an Improper Identification (Class) of Goods/Services office action
Every trademark application has an identification of goods or services, which the USPTO has divided into classes. For example, cosmetics are in Class 003, electronics are in Class 009, clothing is in Class 025, retail store services are in Class 035, and educational and entertainment services are in Class 041.
The USPTO has its own set of specific terms for goods and services that the application must use. For example, a trademark application cannot simply list “clothing.” Instead, it must list all specific types of clothing, such as “clothing, namely, shirts, pants, shoes.”
Another example is “software.” The USPTO will only accept either “downloadable software” or “on-line non downloadable software” and the ID must describe what the software does. For example, “downloadable software for ordering food delivery.”
2. Responding to a Disclaimer for Descriptive Wording office action
The USPTO will require you to disclaim descriptive wording in your trademark application. This means that your trademark includes a word or words that actually describes your goods or services and the USPTO will not give you exclusive rights to owning that particular terminology.
For example, if Mozart owns a piano store and he wants to trademark “MOZART’S PIANOS,” then the USPTO will make him disclaim “PIANOS” because it wants to keep descriptive words like “pianos” open and free to use for the public.
However, even if individual words in the trademark are disclaimed, if registered, the trademark owner still owns exclusive rights to the trademark as a whole. So even though Mozart has to disclaim the wording “PIANOS,” when he receives a trademark registration, he still owns exclusive rights for the entire trademark “MOZART’S PIANOS.” He just does not own exclusive rights to use “PIANOS” alone.
3. Responding to office actions that Request Complete Ownership Information
The USPTO also has some technical ownership requirements that are not so obvious. For example, it will not accept PO Boxes as mailing addresses and will require that an application lists a domicile address. This address will be kept hidden from public view.
Other requests for ownership information include clarifying things about your business. Examples include such clarifications as, is your business a corporation or a limited liability company? Knowing the wide range of correct information needed in an application can save you a lot of time, energy, and money later down the road because it prevents a future refusal.
How to respond to common substantive office actions
The USPTO issues substantive refusals based on different laws stemming from the Lanham Act. These laws are meant to protect already registered trademarks, keep descriptive wording free and open to the public, and to advocate for entities to actually use their trademarks (instead of just trademark squatting).
While all office actions are unique to a specific trademark, this is particularly true for substantive office actions. The tips mentioned below should only be used as a general guide and may not apply to your unique situation.
1. Responding to a Section 2(d) Likelihood of Confusion office action
When the USPTO decides that your mark is too similar to another registered trademark, it issues a Section 2(d) Likelihood of Confusion Refusal. This means that your trademark sounds similar, looks similar, or overall has the same similar meaning to an already registered trademark. This law is meant to protect already registered trademarks because it stops similar marks from being registered.
For example, COCA-COLA, would not be too happy if the USPTO registered a trademark called KOKA-KOLA for soda. So, the most important consideration when you come up with a trademark name is to compare your name with already registered trademarks.
The best way to do this is to do a trademark clearance search, which means you review the entire trademark database for similar names, review state trademarks, and then common law marks (names that are used but not officially registered).
When you receive a Section 2(d) refusal, you will see there are two parts to a refusal. In the first part, the USPTO states why the marks are similar (i.e., KREST for toothpaste sounds too similar to CREST for toothpaste).
In the second part, the USPTO explains why the goods and services are similar (i.e., KREST mouthwash is too similar to CREST toothpaste, because toothpaste companies almost always offer mouthwash too, etc). The USPTO has to explain why consumers would confuse the marks.
To respond to a Section 2(d) refusal, the best thing to do is to argue why your mark has a different overall meaning compared to the registered mark. This can be done in a lot of different ways, but one of the most common ways is to explain why your wording means one thing, while the other term means something else.
For example, if your trademark is “SERGEANT PEPPERS,” you can explain that the meaning makes the commercial impression of music associated with The Beatles, while the wording “PEPPERS” just means food to the ordinary consumer. Another way you can respond is to argue why your goods and services are different from the registered mark’s goods and services.
If you received a Likelihood of Confusion refusal, check out our article on how to analyze and respond to this type of office action.
2. Responding to a Section 2(e)(1) Merely Descriptive office action
A Section 2(e)(1) descriptive refusal means that the USPTO examining attorney believes that your trademark is just describing the types of goods and services you are offering and they want to keep that wording free and open to the public to use.
For example, if you wanted to trademark “CHOCOLATE CHIP” for ice cream, you would receive a Merely Descriptive office action. This is because the USPTO wants to keep the wording “CHOCOLATE CHIP” free to the public, which allows all ice cream companies to use the terminology chocolate chip to describe their flavors.
The best way to avoid a descriptiveness refusal is to make up fanciful words or use arbitrary names that do not seem connected to your goods and services at all. The USPTO considers these types of marks as suggestive, meaning the name does not obviously describe the goods/services offered.
For example, before these terms were well-known, if you saw “CHERRY GARCIA” or “TONIGHT DOUGH,” you would not immediately think of ice cream. However, Ben and Jerry’s came up with these creative names to use as ice cream flavors and they are highly recognizable today. If you started your own ice cream company today, you would not want to try to trademark just “COOKIE DOUGH” because that is descriptive. Instead, a good strategy would be to make up a name that has a double meaning, such as “DOUGH-DOUGH BIRD.”
For more information, please refer to Gerben IP’s in-depth article on responding to a descriptiveness refusal.
3. Responding to a specimen office action
In order to receive a trademark registration, you must show the USPTO proof that you are using your mark. This can be done in many ways, such as providing pictures of your goods with the label on them or providing a screenshot of your business website.
The USPTO has many different technical requirements for specimens. If your specimen does not show the trademark in the way the USPTO needs to see it, then the examining attorney will refuse your application.
This is done to ensure that everyone who owns a trademark registration is actually using the trademark. This prevents trademark squatters.
For goods, the best way to get your trademark specimen approved is to take photographs of your goods with the label on them. For example, if your goods are peanut butter, you just need to show a photo of the jar and the label of the peanut butter on the jar.
If you want to trademark your restaurant services, you provide a screenshot of your restaurant website where you have your restaurant name at the top of the webpage.
Sometimes the specimen refusals are technical and based on certain USPTO rules and regulations. For example, a common type of refusal happens when entities try to trademark clothing. If the applicant submits their specimen as a t-shirt with the trademark name on the front of the t-shirt, it will be refused.
For example, if Nike tried to register the trademark “JUST DO IT,” the company cannot just submit a picture of a t-shirt that has “JUST DO IT” on the front. The USPTO considers this a design and not a trademark.
Instead, Nike has to send a photograph of the clothing hang-tag, with the “JUST DO IT” trademark on the price tag for the USPTO to consider this trademark use.
The best way to prevent a specimen refusal is to hire and consult with a trademark attorney when getting your specimen proof ready. Specimen refusals can take up a lot of time and slow down the trademark process, it is best to try to avoid them altogether so you can get your trademark as fast as you can.
For more information, please refer to Gerben IPs in-depth article on responding to a specimen refusal.
Frequently asked questions about office action responses
How long do you have to respond to an office action?
Historically, you would have had six months to respond to either office action, however, a USPTO rule change in December 2022 now requires a response within three months. You can request a one-time three-month extension of time from the USPTO for $125 government fee.
What happens if you do not respond to an office action?
If you do respond to an office action before the response deadline has passed, your trademark application will become Abandoned.
If a Notice of Abandonment has been issued against your application, you may have an opportunity to respond and revive your pending trademark application
Why am I being contacted by third-parties after receiving an office action from the USPTO?
Five days after a trademark application is filed with the United States Patent and Trademark Office, the application becomes a public record on the agency’s website.
Any subsequent information pertaining to that application is also public, including the issuance of any office actions against the trademark. There are unscrupulous companies and individuals that scrape the USPTO’s website looking for unsuspecting entities to target.
While most of these solicitations are scams, it is possible to be contacted by a company offering a legitimate service. Even if the company is legitimate the USPTO does not endorse solicitations and you are not required to use these companies.
As a general rule, treat all solicitations with extreme caution as the most reputable entities will not contact a trademark applicant.
Final thoughts
While an office action refusal stops your trademark application, it is not the end of the road for you. There are best practices and legal strategies you can use to fix trademark applications, in order to convince the USPTO that your mark deserves a trademark registration!
To save the most time, energy, and money upfront, it is best to engage with trademark counsel before applying for a trademark. That way, you get the most complete information needed to move forward with your trademark idea, you can assess all the risks, and you know what challenges if any, might come up if you really want to get your trademark.
If you need assistance in responding to any office actions, contact the experienced attorneys at Gerben IP today.
Josh Gerben, Esq.
Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.
Do you need assistance with a trademark matter?
Contact an Attorney Today