An “Office Action” is an official “action” issued by the United States Patent and Trademark Office on a trademark application.  It typically requires a trademark applicant to respond within six months to fix an issue with the application or respond to a more substantive refusal.

Once a United States federal trademark application is filed, it reaches an examining attorney about three to four months after the initial filing date. From there, the USPTO examiner will determine whether or not the application meets all of the requirements necessary for a registration. If it does not, the examining attorney will issue the an Office Action.

While the issues that trigger Office Actions vary, the most common are:

  • Technical deficiencies
    • Insufficient identification of goods and services
    • Need for disclaimers
    • Improper specimens
  • Substantive refusals
    • Likelihood of confusion
    • Merely descriptive

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, typical technical deficiencies are obstacles that can be overcome.

Insufficient identification of goods and services

Often, trademark applications are submitted with incorrect or insufficient language describing the goods and services that the trademark represents. This occurs in many instances when individuals attempt to file their own trademark applications without the assistance of an attorney. These errors are also often found when filed by applicants that are located outside of the United States. Because the USPTO maintains strict rules and requirements pertaining to the language used to describe goods and services in trademark applications, they will issue Office Actions to correct cited insufficiencies. The applicant is then able to make corrections or clarifications to submit in response.

Disclaimers

Another frequent technical issue that generates Office Actions is the need for a disclaimer. This occurs when the examining attorney requests the applicant to disclaim a part of their mark because that portion of the trademark is highly descriptive or generic. For example, a trademark application filed for “Josh’s Clothing Brand” may require a disclaimer for “Clothing Brand” due to the descriptive nature and frequency of this phrase in commerce. Disclaimer requirements are more serious when the request is made regarding the entire trademark. If required to disclaim the whole mark, it will be incredibly challenging for the trademark owner to enforce their mark’s rights.

Improper specimens

Improper specimens are also common technical issues for which an Office Action is issued. If you file a trademark application with a 1(a) filing basis, or based on an “actual use in commerce”, a specimen demonstrating the trademark’s use in commerce is submitted as part of the application. If you file a 1(b) or intent to use application, the specimen is submitted with a later filing. Regardless of when the specimen is presented for the USPTO’s review, if it does not show the trademark being used properly in the marketplace or in accordance to the classes listed in the application, an Office Action will be issued. The applicant will be asked to provide further examples of the trademark being used in commerce. It is in the applicant’s best interest to submit this additional evidence with the supervision of a trademark attorney who understands the USPTO’s specimen expectations.

Office Actions for Substantive Issues

Substantive refusals are more serious Office Actions that indicate an issue with the substance of the trademark itself. These rejections are not necessarily surmountable and are best addressed with the assistance of a trademark attorney to provide the highest chance of the application’s survival.

Likelihood of confusion – Section 2(d)

One of the most common substantive refusals is a Section 2(d), or likelihood of confusion refusal. If the USPTO believes that your trademark application is too similar–whether it be in appearance, impression, or phonetics–to an existing trademark registration, they will issue a 2(d) “likelihood of confusion” refusal. Trademarks exist to function within the marketplace; therefore, preventing confusion in commerce is one of the USPTO’s main priorities. If your application is too similar to a registered mark, their simultaneous existence would likely confuse consumers and subsequently would not be permitted.

These refusals can be challenging to confront and may result in the applicant needing to file for a different trademark. However, getting around a 2(d) refusal is not impossible and can be achieved by submitting appeals to the USPTO requesting reconsideration of the decision. Additionally, attacking the validity of the trademark that may be blocking yours can be effective if that existing registration is no longer in use or has other underlying issues with its registration.

Merely descriptive – Section 2(e)(1)

Another commonly seen substantive refusal is a Section 2(e)(1), also referred to as a merely descriptive refusal. This Office Action means that the examining attorney has determined that the applied-for mark is simply just a description of the goods and services it would cover, and therefore does not possess the uniqueness needed to obtain a registration. These refusals can be bypassed by amending the applications to register on the Supplemental register rather than the Principal register–this still allows the applicant to use the circled R symbol in conjunction with the mark and preventing others from registering trademarks identical to theirs.  That said, accepting registration on the Supplemental Register can significantly affect your ability to enforce your trademark.  You should consult with an attorney prior to accepting such an amendment.

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 Law Firm.

­­­