What is an Office Action?

An “office action” is an official “action” or “notice” issued by the United States Patent and Trademark Office on a trademark application that does not meet the requirements necessary for a registration.

How do office actions affect the trademark application process?

Once a trademark application has been submitted to the USPTO, it will sit for about 10 months (as of June 2024) until an examining attorney can review it. Upon review of the trademark application, the USPTO examiner will determine if there are any deficiencies with the application. If there are, the examining attorney will issue an office action.

Once an office action has been issued, a response is required in order to make the necessary corrections to the trademark application. This will cause the trademark application process to stop until the application has been corrected and can add from three to six months to an already long process. 

If a trademark application is going to receive an office action, it will typically be issued before the trademark is Published for Opposition. One exception to this rule can be an Improper Specimen refusal. If the trademark was filed on a “intent to use” basis. This is because a trademark Specimen is not submitted until the mark is being used in commerce.

How long do you have to respond to a USPTO office action?

A trademark applicant typically has three months to respond to an office action. If more time is needed, an applicant can apply for a one-time extension of three months.

The extension request must be filed before the initial response date has been reached and will cost $125.

A failure to respond to an office action in a timely manner will result in the trademark application being Abandoned. You will lose your government filing fees and trademark priority date if this occurs.

What’s the difference between a final and non-final office action?

A non-final office action is typically the first office action issued by a USPTO examining attorney. When a non-final office action has been issued against a trademark application, the applicant has an opportunity to address the noted issues by submitting a response to the office action.

A final office action is issued if the examining attorney has reviewed the applicant’s response to the non-final office action and still disagrees with the applicant’s arguments or amendments. As a final office action indicates that the USPTO examiner has made a final decision on the trademark, the applicant’s options to respond are more limited.

If your trademark receives a final office action, you have three options.

1. File a response to all outstanding requirements.
   This option is only applicable if you did not properly answer a previous request from the examining attorney, regarding a technical deficiency with your application. Once you file a response that satisfies the requirements of the office action, your trademark application can proceed.
2. File a Request for Reconsideration.
   If your office action was of a substantive nature, you can file a Request for Reconsideration along with additional legal arguments. If the examining attorney agrees with this information, they can allow your trademark to continue in the registration process.
3. File an appeal with the Trademark Trial and Appeal Board (TTAB).
   Once all other options have been explored, you do have the right to file an appeal to the examining attorney’s decision with the TTAB. This appeal must filed within six months of the final office action date or your trademark will be abandoned.

It’s important to note, that if your trademark application receives a final office action, it does not necessarily mean that your trademark will not become federally registered. However, you may want to consider consulting with a trademark attorney, who can help you determine the best course of action for your particular situation.

What kind of issues cause a trademark office action?

While the issues that trigger office actions vary, they can be classified into two categories:

• Technical Deficiencies
• Substantive Refusals

For a more in-depth look at the most common types of office actions and how to respond to them check out these additional resources.

• Understanding Common USPTO Office Actions
• How to Respond to a Trademark Office Action

Trademark office actions for technical deficiencies 

Office actions issued due to technical deficiencies within an application are usually easily addressable issues. While all office actions hinder the application process, typically technical deficiencies are obstacles that can be overcome.

Common technical deficiency office actions include:

• Disclaimer Needed
• Domicile information
• Improper Signature/Signature Needed
• Improper Specimen Provided for Proof-of-Use
• Incorrect Color Claim of the Trademark
• Incorrect Description of the Trademark
• Incorrect Identification (Class) of Goods/Services
• Living Person Disclaimer/Consent Needed
• Request for More Information
• Suggested Amendment to Supplemental Register
• Translation Needed
• US-based Attorney Information Required

These types of office actions can also be referred to as Administrative requests.

Trademark office actions for substantive issues

Substantive refusals are more serious office actions that indicate an issue with the substance of the trademark itself. These types of issues are not easily resolved through a minor amendment or correction to the application and typically require a more thorough legal argument.

It is important to note that receiving a substantive refusal does not necessarily mean that the trademark cannot be registered. These office actions are best addressed with the assistance of a trademark attorney to provide the highest chance of the application’s survival. 

Common substantive office actions include:

• Failure to Function as a Trademark
• Refusal because of the Controlled Substance Act
• Section 2(d): Likelihood of Confusion (Trademark is Too Similar to an Existing Trademark)
• Section 2(e)(1): Trademark is “Merely Descriptive”
• Section 2(e)(2): Trademark is Primarily Geographically descriptive
• Section 2(e)(4): Trademark is “Primarily a Surname”
• Trademark is Generic
• Trademark is Misleading or Deceptive

Need help responding to a trademark office action?

If you have any questions about an office action you received or a response that may be needed, feel free to get in touch with any of the attorneys at Gerben IP.

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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.