USPTO Office Actions in a Trademark Application: How to Respond

Types of USPTO Office Actions a Trademark Examiner May Issue and Their Triggers

There are two types of office actions an applicant can receive: Non-final or Final. Generally, the deadline to respond to either type of office action is 3 months from the issuance date of the office action. The USPTO allows a one-time petition for extension of time to respond for a fee of $250. This extension of time grants a further 3 months from the issue date of the office action, allowing a total of 6 months to respond to received office action from the USPTO.

Non-Final Office Actions

A Non‑Final office action is the first substantive communication issued by an examiner that details their identified issues with the application. Applicants have the opportunity to offer clarification, make amendments, or argue against the identified concerns in a formal response to the same examining attorney who originally reviewed the filed application and issued the communication.

Final Office Actions

A Final office action indicates that applicant’s response to the prior issued non-final office action was not persuasive enough to satisfy the examiner’s concerns. The word “final” is not as irrevocable as it seems, as there is still a chance to overcome the rejections or refusals at hand through different, more formal methods depending on whether it relates to a patent or trademark application.

Each type requires a tailored approach—a non‑final response can be more lenient, while a final action demands stronger arguments or next‑step filings.

Important Note: It is very common to receive an office action in most trademark registration applications. Applications are rarely approved as filed.

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Office Actions in a Trademark Registration Application

There are a multitude of reason why a trademark examiner may issue an office action. Some of the most common office actions include the following refusals and requirements:

• Section 2(d) Refusal – Likelihood of Confusion
• section 2(e) Refusal – Merely Descriptive
• Specimen Refusal
• Disclaimer Requirement
• Definite Identification of Goods or Services Requirement

Section 2(d) Refusal – Likelihood of Confusion

An examining attorney may issue a Section 2(d) Refusal if during their examination, they find similar pending or registered trademarks to the applicant’s proposed mark in the same or a relevant class of goods or services, similar enough to potentially confuse consumers about the sour of the goods and/or services.

There are a various methods an applicant can employ to overcome a Likelihood of Confusion Refusal. If the applicant does not agree with the examiner’s refusal, they may respond with factual arguments, evidence, and/or industry knowledge in support of the proposed mark being distinct in connection to the identified goods and/or services. Another argument against a section 1(d) refusal can pertain to the relatedness of the goods and services of the trademark application at hand versus the the goods and services of the other trademarks indentifed by the examiner. A detailed explanation and accurate identification of the goods or services class filed in the pending application will assist the examiner in understanding the class the applicant is applying for.

Another strategy to overcome this type of refusal may be to amend the identified class of goods or services of the trademark registration application by narrowing down the goods or services to be extremely specific to the applicant’s field or industry. However, it is important to note that if such amendment is made then rejected, the examining attorney likely will not allow a further amendment back to the original identified class.

An ulterior manner to possibly overcome a likelihood of confusion refusal is to get a consent agreement from the other applicants and/or owners of the trademarks set forth by the examiner. A consent agreement provides written consent to the use and registration of the applicant’s desired trademark and includes arguments from the parties on why they believe no likelihood of confusion exists. A consent agreement is only strongly considered and does not ensure the refusal will be overcome.

Be sure to check the present status of the trademarks or trademark applications presented by the examining attorney in the office action. Any dead or cancelled applications should be brought to the attention of the examiner, as they cannot hinder the registration of the applicant’s proposed mark.

Section 2(e)(1) Refusal – Merely Descriptive

An examining attorney may issue a Section 2(e)(1) Refusal if they find the desired trademark merely describes the nature of the goods and/or services the mark is used in connection with. In other words, if the desired mark is too descriptive of the identified goods and/or services claimed in the application, therefore cannot serve as a trademark. This is due to the fact that other businesses (competitors or not) need to be free to use descriptive language in marketing and advertising without the threat of an infringement lawsuit arising.

There are a few ways an applicant may try to overcome a Merely Descriptive Refusal. If the applicant does not agree with the examiner’s merely descriptive concern, they may respond with factual arguments, evidence, and/or industry knowledge in support of the proposed mark not being a description of the connected goods and/or services. If the applicant accepts the refusal reasoning, they may amend the application to seek registration on the Supplemental Register or amend the application to include a Section 2(f) claim to the filing basis.

Registration on the Supplemental Register does not require any further evidence to be filed at the time of its submittal, however the Supplemental Register not provide the same protection as the Principal Register. A Section 2(f) claim requires evidence to be submitted indicating the trademark has acquired distinctiveness over time through use in commerce. This option is not suitable if the desired trademark is found to be both descriptive and generic for the connected goods and/or services,

Specimen Refusal

A specimen may be refused if the examining attorney determines a specimen is not valid due to 1 of 2 main reasons: 1) the specimen is the incorrect type, or 2) the specimen does not properly show the applied for mark in connection with the goods and/or services claimed. A specimen is a sample provided to the USPTO that demonstrates actual use in commerce of the applied-for mark in connection to the goods and/or services identified in the application at the time of filing.

This refusal is often seen with online businesses. In order for a trademark to serve its function, it must be used in a way that consumers would perceive it as a source indicator for the goods or services tied to the mark according to the filed application. Common triggers for a specimen refusal include:

• The mark does not appear on the specimen submitted;
• The mark on the specimen does not match the mark drawing submitted in the trademark application;
• The specimen provided is not associated with the goods or services identified in the application.
• The specimen is a “mock up, digitally altered image (or mock up”) that is not actually used in the marketplace.
• The specimen is not the appropriate type for the goods or services, such as advertising for goods (advertising is not an acceptable specimen type for goods, only services).
• Trademarks that convey only a widely used commonplace expression (such as “Have a nice day”);
• Trademarks that are perceived as mere ornamentation or adornment (such as a large elephant logo on the front of a t-shirt);
• Trademarks that show the title of a single book or CD and not that of a series; or
• Trademarks that are used as the name of a process or system used to make the goods or when providing the services.

An example would be a specimen that shows a label on a beer bottle for a trademark application for wine. A label on a beer bottle would not be acceptable, but a label on a wine bottle would be acceptable.

There are two responses that may be able to overcome a specimen refusal: 1) arguments in support of the specimen being acceptable in accordance with USPTO standards, or 2) a valid substitute specimen included in the response to the issued office action.

A specimen cannot be substituted if the goods or services in the application do not actually match the goods or services used in the marketplace as the applicant would be unable to provide valid proof. At this point, an amendment would need to be made to the international class of goods or services to accurately represent the actual use of the goods or services. However, it is unlikely the examiner will allow such a change if the amendment broadens the goods and/or services already identified in the application at the time of filing.

Disclaimer Requirement

A disclaimer requirement is a statement that the applicant does not claim the exclusive rights to a specific term or design that would be unable to be registered if singled out. Submitting a disclaimer does not make any changes to the appearance of the applied-for mark. The purpose of a disclaimer is so other people and/or businesses may use the specific term or design when describing their goods, services, or business without infringing a registered trademark.

These words are typically generic, descriptive or misdescriptive, laudatory, varietal or cultivar, geographic, informational, a business type, widely used messages (social or political), religious text or citation, or well known symbols. The following are examples found on the USPTO website of marks that would require a disclaimer requirement (the disclaimed portion in bold):

• Generic: Pete’s Aspirin for pain relief medication;
• Descriptive: Fab Creamy for yogurt;
• Misdescriptive: Tiger Clear for footwear that is not actually transparent;
• Laudatory: Crane’s The Best Beer in America for beer
• Varietal (or cultivar): Alfalfa Seed for alfalfa seed
• Geographic: Sparkle Venice for glassware from Venice, Italy
• Informational: EST. 2021 or NET WEIGHT 50g
• Business Type: ABC Corporation for a corporation name
• Widely used message: Sunnyside Proudly Made in the USA
• Religious text or citation: Psalm 23
• Well known symbol: the biohazard symbol for hazardous services or the dollar sign symbol for financial services

To overcome a Disclaimer Requirement, an applicant must simply submit the disclaimer in the following format:

“No claim is made to the exclusive right to use “[disclaimed portion of applied-for mark]” apart from the mark as shown.”

Important Tip: Disclaimers can be submitted at the time of filing the registration application to avoid being issued an office action that makes the disclaimer a requirement for registration approval.

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Definite Identification of Goods or Services Requirement

A Definite Identification Requirement is issued if an examining attorney determines that some or all of the goods and/or services identified in an application are too broad and therefore seemingly indefinite. The description of goods and/or services must be clear, concise, specific, and accurate in order for the public to understand the industry in which the goods or services are being used in and to properly classify the goods or services. Identification that is too broad could be interpreted as including goods or services in other international classes, which would require additional USPTO fees.

Once an application is submitted, the identified goods or services of the application cannot be expanded to include further classes. In order to do so, an entire new application would need to be filed. The only acceptable changes made after submittal is the narrowing or limiting of the scope of identified goods or services. Once an amendment is made to the identification of goods and/or services, and the examining attorney accepts said amendments, a subsequent amendment back to the original identification cannot be made regardless of circumstance. In this case, a new application would need to be filed.

To overcome a Definite Identification of Goods or Services Requirement, first review the examiner’s suggested amendments. If the applicant agrees with the advised revisions, a response is still necessary to approve said amendments. An applicant also has the choice to respond with arguments and information that explain the industry of the goods or services in order to assist the examiner in understanding the identification. Plain, non technological language should be used so that a person not skilled in the art is able to understand clearly.

Other USPTO Notices and Communications

Notice of Design Search Code

A USPTO Notice of Design Search Code is simply a communication from the examining attorney stating that the applied-for mark in the application has assigned design search codes. According to the USPTO, “a Design Code is a numerical classification that organizes design elements into three tiers: categories, divisions, and sections.” The USPTO assigns all design marks containing figurative components a 6-digit numerical code(s) (design code) for searching purposes in the USPTO’s Trademark Design Search Code Manual. This notice does not signify registration has been approved nor does it require a response be filed.

Notice of Abandonment

A notice of abandonment is issued when the examiner had previously delivered an office action and the applicant and/or their legal representation failed to respond by the deadline. Applicants are allowed 3 months from the issue date of the office action to respond to the examiner’s concerns. Applicants additionally are allowed a further 3 months from the issue date of the office action if a petition to file an extension of time is submitted in a timely manner and the USPTO petition fee is paid. Failure to respond to the office action issued by the examiner will result in abandonment of the application.

A notice of abandonment informs the applicant of their failure to respond and the subsequent consequence of a dead trademark registration application. The notice also contains information on how to revive an abandoned application and give applicants guidance on the revival process. A Petition to Revive can be filed if the abandonment was the result of an “unintentional” delay and must be filed within two months from the issue date of the Notice of Abandonment. If the applicant did not receive the Notice of Abandonment on time in order to file a petition to revive, the USPTO allows filing of the petition no later than 6 months from the date of abandonment.

If the deadlines to file a Petition to Revive are missed, the trademark registration application becomes permanently dead and cannot be revived through any USPTO petition. A new registration application would need to be filed, losing the original filing date associated with the earlier abandoned application. A $250 USTPO fee must be paid at the time of the filing of the Petition to Revive.

Notice of Revival

If an examining attorney approves a Petition to Revive an Abandoned Application, a Notice of Revival will be delivered to the applicant and/or their legal representative. A Notice of Revival simply informs the applicant that their Petition to Revive has been received, accepted, and revived. The notice also informs the applicant of which appropriate office the application will be forwarded to (most commonly back to the assigned examining attorney). This notice does not signify registration has been approved nor does it require a response be filed.

Notice of Suspension

A Notice of Suspension is a communication from the examiner that notifies an applicant that their trademark application has been placed on hold for a specific reason. This notice does not signify registration has been approved nor does it require a response be filed. There are four main circumstances in which a suspension notice may be issued:

1. If the examining attorney believes there may be a likelihood of confusion between the mark in a trademark application they are reviewing and another mark in a pending trademark application with an earlier filing date, they will suspend action on the application at hand until the prior-filed application either (1) is approved for registration or (2) becomes abandoned;
2. If the examining attorney believes there may be a likelihood of confusion between the mark in a trademark application they are reviewing and another mark in a earlier-filed pending trademark application that is in the grace period for the owner to file either a Section 8 Declaration of Use, Section 71 Declaration of Use, or Section 8 and 9 Renewal, the examiner will suspend action on the application at hand until the prior-filed application either (1) is maintained (renewed) or (2) goes abandoned and is therefore cancelled by the USPTO;
3. If a trademark application is filed under a Section 44(d) filing basis, the examining attorney will suspend action on the U.S. application until the foreign trademark application is approved for registration and a copy of the foreign registration is sent to the USPTO; or
4. If the applicant of a trademark registration application submits a request of suspension for a specific reason the examining attorney finds appropriate.

Notice of Publication

A Notice of Publication is delivered to the applicant of a pending trademark registration application notifying them that the application has been approved for publication in the USPTO’s Trademark Official Gazette, and provides them with the publication date. The Trademark Official Gazette (TMOG) is published online weekly on Tuesday and contains a visual along with the information of each pending trademark in the publication period of the trademark registration process. During this publication period, beginning from the date of publication, any member of the public has 30 days to oppose the registration of a trademark. In order to do so, they must file a Notice of Opposition.

This notice does not signify registration has been approved nor does it require a response be filed.

Notice of Opposition

If a Notice of Opposition is filed, the applicant has 40 days from the publication date of the notice to respond and address each specific allegation stated in the notice. The response must either admit, deny, or claim insufficient knowledge to respond to the allegations at hand. From there, an opposition proceeding with the Trademark Trial and Appeal Board (TTAB) begins. If an applicant fails to respond to a Notice of Opposition in a timely manner, the application becomes abandoned and cannot be revived through a petition.

Notice of Registration (Certificate of Registration)

A Certificate of Registration can be expected to be issued if a trademark application makes it through the publication period without a Notice of Opposition being filed, and is filed under a Section 1(a) use in commerce filing basis. This notice signifies registration has been approved and does not require acknowledgment from the trademark owner.

Notice of Allowance

If a trademark application makes it through the publication period without a Notice of Opposition being filed, and is filed under a Section 1(b) intent to use filing basis, a Notice of Allowance will be issued, notifying the applicant that a Statement of Use (SOU) must be submitted to the USPTO within 6 months from the date of issue (or up to 30 months if all 5 allowed 6-month extension of time requests are filed). If an applicant fails to respond to a Notice of Allowance by submitting a SOU in a timely manner, the application becomes abandoned, however may be revived through a Petition to Revive an Abandoned Application.