A trademark Office Action response is a formal response to a trademark refusal by the United States Patent and Trademark Office (“USPTO”). Without question, if you receive a trademark Office Action response, you should contact an experienced trademark attorney as soon as possible to avoid missing deadlines. A trademark attorney can increase your odds of success.

The USPTO routinely issues Office Actions. In a trademark Office Action response, the USPTO is inviting you to offer clarification and/or present an argument. The USPTO is explaining that your application contains a defect and that for it to proceed, you should provide a response. Depending upon the response you provide, you could win or lose.

1. Why Was My Trademark Application Rejected?

Once you or your attorney submits a trademark office action response, it will take about 6 to 8 months for your USPTO Examining Attorney to review. The Examining Attorney will review your response for completion and accuracy. If accepted, your application will move toward publication. If rejected, a final USPTO Office Action will issue. Below, I explain what happened to your application and how you can fix it.

However, before we dive into how to respond to a USPTO Office Action, we must unpack what went wrong. Each year, the USPTO’s approximately 600 trademark attorneys review over six hundred thousand trademark applications. A USPTO government attorney (called an “Examining Attorney”) reviewed your application and decided that there was either an issue with the application or the trademark chosen. 

In fact, they came to that conclusion after interpreting the following sources: (1) the United States Code; (2) federal case law; and (3) the Trademark Manual of Examining Procedure (TMEP). To win your Office Action, we need to understand your Examining Attorney.

2. Understanding Your Trademark Examining Attorney

Generally, before providing a trademark Office Action response, it is advisable to review the Examining Attorney’s refusal. Normally, the Examining Attorney will either bullet point list near the top or use headings and subheadings for the issues that must be addressed.

Additionally, the list or heading serves as the USPTO Examining Attorney’s “roadmap.” In fact, he or she is telegraphing very clearly what they want to see addressed in the trademark Office Action response. However, a list or heading may not contain every issue. Therefore, carefully read the Examining Attorney’s letter to determine what he or she saw that caused the USPTO to issue the refusal letter and create a checklist.

3. Finding Your Trademark Office Action Before a Response

After reviewing the Examining Attorney’s letter, carefully review your application.

• 1. Go to TSDR.
• 2. Entering your Serial Number (your Serial Number is found near the top of the email you received from the Examining Attorney) in the middle field and click “Status.”
• 3. Click on the tab that says “Documents.”
• 4. Scroll down to the earliest document, it will say either “TEAS Plus New Application” or “TEAS Standard New Application,” and click on the link.
• 5. Review your application.

4. Trademark Office Action Response Checklist

Before starting the trademark Office Action response, review carefully the “Issue date” near the top of the letter.

1. Note any deadlines listed in the document. You must respond within three months of the issue date.
2. Review the bullet points at the top of the first paragraph, sometimes it may say “Summary of Issues.”
3. Read the headings within the body.
4. Write down each bullet point and heading; each must be addressed.
5. Quickly skim over the USPTO Office Action, and cross off each bullet point and heading you jotted down. Make sure all issues are crossed off.
6. Now, carefully read the entire Office Action letter. Check off all issues that need to be addressed, and revise the issue list as needed.

You are now ready to write a trademark Office Action response.

5. Review Your Initial Application for Errors

You should use this time to go through the application you submitted to ensure all information is current and accurate. Additionally, review the application for the errors that the Examining Attorney pointed out. Here are some questions you should ask while going through your application:

A. Questions Regarding the Mark

In your trademark Office Action response, think about how you used your “mark.” The mark is what word, logo, or slogan.

• Did you submit a “Standard Character Mark” (a “brand name” or “slogan”), a “Special Form (stylized and/or design)” (also known as a “logo”)?
• Does your mark match letter-for-letter the “Literal Element” field?
• If you selected a logo, is your mark in black-and-white or color? Did you make a color claim? If you claimed color, did you accurately describe all colors? How did you describe the logo?
• Did you disclaim a common term in your trademark such as “Company,” “Services,” “Store”?
• Does your trademark have a meaning in a foreign language?
• Does your trademark identify a living person, or describe your goods or services?

 

B. Reviewing Your Goods and/or Services Description and Filing Basis

In the trademark Office Action response, review your goods and/or services (i.e., how did you “identify” them in the “Identification” section)?

• Caution: Describing your goods or services too broadly and submitting the insufficient number of International Classes or the incorrect International Classes is often a point of error.
• Are you in one or more than one International Class?
• Did you or someone else write a custom description, or did you use the Trademark ID Manual?

What filing basis did you use?

• (a) It could be Section 1(a) Use-in-Commerce, in which case you stated that you were using your trademark with goods or services “in commerce.”
• (b) If it was Section 1(b) Intent-to-Use, you stated under oath that you have a bona fide intent to use your mark in commerce with certain goods or services at a later date.
• (c) A combination of (a) and (b) for two or more goods or services.

C. Reviewing the Specimen

Did you submit a “specimen”? This is only applicable for Applicants filing a Section 1(a) application. If you filed a Section 1(b) application, you must eventually file a Statement of Use/Amendment to Allege Use with a specimen and an additional fee

• Does the mark you originally submitted match the specimen?
• Is it clear what the specimen consists of?
• Does the specimen include a date stamp and URL (if applicable)?

6. “Offc Action Outgoing”

After looking over your application, see if you can spot the issue(s) the Examining Attorney discussed in your Office Action letter.

To continue, do the following:

• Click the Back button or look at “Document Description” below which is a dropdown item.
• Go to “Offc Action Outgoing,” which simply means “Office Action Outgoing.”

The Examining Attorney provided you with at least one type of the following types of Office Actions: a (1)Substantive or (2) non-Substantive. Your job now is to identify which one they sent to you (sometimes, it is a combination), and prepare a response. How do you identify the correct Office Action? Below I go over all three types.

7. The Two Types of Trademark Office Actions

1. “Substantive Office Action” (called a “Major Office Actions”);
2. “Non-Substantive Office Action” (also called a “Minor Office Actions”); and,

You can tell whether you face Substantive or non-Substantive Office Actions by the type of response requested. If the USPTO requests anything except an argument, it is non-Substantive Office Action. If, on the other hand, the USPTO requests a legal argument, you are probably looking at a Substantive Office Action.

Below, I will go through each, starting with Substantive Office Actions, followed by non-Substantive Office Actions.

8. Substantive Office Actions (“Major Office Actions”)

Generally, almost all Substantive Office Actions (or “Major Office” Actions) are listed in 15 U.S.C. §1052 (§2 of the Lanham Act). Generally, Major Office actions require a legal response. Here are the most common major office actions.

• §2(d) Likelihood of Confusion*
• §2(e)(1) Merely Descriptive Refusal

* “Likelihood of Confusion” is perhaps the most common trademark Office Action.

Lesser known, but occasionally seen Substantive Office Actions are:

• §2(e)(2) Geographically Descriptive
• §2(e)(4) Primarily a Surname Refusal
• §2(c) Consent Needed for a Living Individual

9. The #1 Office Action Response: §2(d) – Likelihood of Confusion

Broadly speaking, a likelihood of confusion rejection is the mother of all rejection. In fact, it is both common and potentially fatal. one of the most common reasons for trademark registration refusal. In plain English, the Examining Attorney is saying that there is an issue with the mark you provided because it is too confusingly similar to another trademark that is registered at the USPTO. On the other hand, if your mark is too similar to an application that is pending before the USPTO, you may receive a suspension letter and there may still be a Likelihood of Refusal waiting if another application registers.

A trademark office action response is necessary to persuade an Examining Attorney that a trademark application should not be rejected because it appears similar, sounds similar, or is in the same trade channel as another trademark. The Examining Attorney wants you to put forward three things:

1. the legal standard,
2. explain the facts, and
3. provide a legal analysis by applying the facts to the law.

How can you convince the Examining Attorney to see your side, relent, and clear your application for publication? Enter the DuPont Test.

10. Winning a Likelihood of Confusion Office Action

Winning a Likelihood of Confusion trademark Office Action response requires creativity. In addition, you should use a tone that is persuasive and firm, but diplomatic and respectful. You should argue that the marks are not similar on the basis that they differ, if at all possible, due to (1) appearance, sound, connotation, and (2) the goods and/or services provided. These are the first two factors in the DuPont test and the only relevant ones. 

Try to use solid evidence such as your website, packing, or advertisement and contrast that with the goods and/or services offered by the mark cited. You may even go as far as using a dictionary definition. Present your evidence and apply the law to the facts.  Make the persuasive argument that your mark is distinguishable.

In addition, there are two other alternatives. First, before even preparing a trademark Office Action response, ask your Examining Attorney if you could delete certain goods and/or services from your identification. Assuming that is what you would like to do, and the Examining Attorney agrees, that will allow you to overcome the Likelihood of Confusion refusal. Second, you can reach out to the cited mark’s owner and enter into a co-existence agreement. If you do sign a co-existence agreement, the USPTO must withdraw the Likelihood of Confusion refusal. 

11. Responding to a Merely Descriptive Trademark Office Action Response

If the Examining Attorney alleges that your mark is “merely descriptive” you have a few options. 

First, the USPTO may provide you the option of “Amendment to the Supplemental Register.” If that option is provided, you should accept. The Supplemental Register is still very powerful, and after 5 years you may elect to move to the Principal Register. The only real difference between the two is that the Supplemental Register does not give you the option of petitioning US Border and Custom to stop the importation of infringing marks.

Second, you could argue that the trademark, if used for 5 years before filing, has obtained “secondary meaning” in the eyes of the public. That is to say that the general public has attached a meaning outside of the dictionary definition. Here, you would make an argument for “acquired distinctiveness” under Section 2(f) of the Lanham Act.

Finally, you could write a trademark Office Action response that the trademark is not descriptive and is simply “suggestive.” This requires creative input. A suggestive mark requires a logical leap from the trademark to its goods and/or services offerings. For instance, GREYHOUND is a suggestive mark because it suggests speed. On the other hand, VITAMIN MARKETPLACE for diet pills is merely descriptive. An experienced trademark attorney can help make this argument persuasive with a memorandum of law.

12. Non-Substantive Office Actions (“Minor Office Actions”)

Non-Substantive Office Actions (or “Minor Office Actions”) result due to an error concerning the Trademark Manual of Examining Procedure (“TMEP”). To fix a Non-Substantive Office Action, review the Office Action Letter, enter the words “UPSTO TMEP” including the appropriate section into Google Search, and review the appropriate subsection. Below, the most common trademark Office Action responses are produced.

13. Specimen Refusal

A specimen refusal is a rejection due to the failure to follow mandatory guidelines for appropriate specimens. Here, a “specimen” is proof submitted to the UPSTO showing the use of a trademark in commerce. This refusal is issued in situations where:

• a specimen does not show the use of the mark “in commerce” (“in commerce” is a legal term);
• a trademark is not shown in association with the goods/services;
• the specimen shows different goods/services than those in the application;
• a trademark is different from on the submitted specimen than what was submitted in the application; and/or
• a webpage is missing a URL or date stamp.

14. Inaccurate Identification and Classification of Goods and/or Services

If you receive an Office Action for an inaccurate Classification listing, your best course of action is to simply listen to your Examining Attorney’s suggestions. What the USPTO is attempting to do here is to put your goods and/or services into the appropriate International Class. If their recommendation is acceptable, you should use the TEAS system to make a trademark Office Action response amendment. Simply modify the identification to comply with the Examining Attorney’s suggestions. 

15. Multiple Class Requirement

A Multiple Class Requirement refusal arises where an applicant uses the TEAS Standard form, and inserts a custom Identification (or has someone else do it for them). The custom description will involve an Identification that spans more than one Classification. In other words, an individual will pay only $350 to the USPTO mistakenly thinking he or she may provide a broad description that covers more than one International Class when that amount is insufficient.

Of course, this is not acceptable to the USPTO. The USPTO requires that the Applicant pays for each International Class. Therefore, an Applicant cannot pay for one International Class and run around the USPTO requirement for several International Classes by providing an Identification that encompasses more than one International Class.

16. Inquiry Regarding Name/Portrait/Signature of a Living Person: Consent Needed

If your trademark identifies a living person by name or includes their likeness by the use of their portrait or signature, you must provide their consent. This is true even if it is conceivable that the person is alive. The rationale behind this procedural requirement is simple: The USPTO wants to protect the privacy interest of an individual concerning their name and likeness during their lifetime. The purpose’s rule is to ensure that an individual’s name or likeliness is not misappropriated.

The most common types of refusals issued are for:

• Pseudonyms (e.g., “PIERRE DELECTO,” used by Sen. Mitt Romney)
• Names (e.g., SERENA WILLIAMS)
• Stage Names (e.g., “YE,” used by Kanye West) 
• Portraits (e.g., “MICHELLE OBAMA,” a portrait by Amy Sherald)
• Titles (e.g., KING ABDULLAH II, the current King of Jordan)
• Nicknames (e.g., “MAGIC,” for basketball player Earvin Johnson Jr.)
• Signatures (e.g., the signature of any living person)

17. Disclaimer Required

A refusal for “Disclaimer Required,” “Disclaimer Necessary” or simply “Disclaimer” is a request from the Examining Attorney to disclaim certain words within a trademark. Applicants must disclaim “[u]nregistrable component[s] of a mark otherwise registrable . . . .”. and a person may “voluntarily disclaim . . . a mark sought to be registered.” 15 U.S.C. §1056(a); TMEP §1215.07. Simply put, a disclaimer is a word that standing alone is not registrable.

For example, if a person wants to file for an Android application called HONEYBEE SOFTWARE, the USTPO would require a disclaimer for the word “SOFTWARE” since the word is generic in this context. For instance, “Bank,” “Company,” “Retail” and “Store,” are common words that require a disclaimer. Your Examining Attorney likely wrote out: “No claim is made to the exclusive right to use [the unregistrable word(s)] apart from the mark as shown.”

Respond to the Office Action by entering the words that must be disclaimed.

18. Translation of Foreign Wording in The Mark

The USPTO simply needs a translation. Respond to the USPTO Office Action by providing the English equivalent translation of the word, if applicable. If no translation exists, you may explain so to the Examining Attorney.

19. Clarification of Entity Type and Citizenship

In this particular USPTO Office Action, the USPTO detected an inconsistency between the trademark’s owner and the entity selected. This Office Action is issued if an Applicant enters the individual’s name under “Owner of Mark,” but selects “Limited Liability Company” or “Corporation” under “Legal Entity Information.” It may also occur if the Applicant enters a corporation (e.g., Mitchell Consulting Inc.), but selects “individual.”

20. Mark Differs on Drawing and Specimen

Responding to an issue with a trademark that is different on a drawing and/or specimen is straightforward. This USPTO Office Action commonly arises where the Applicant initially submits a mark on the application (the “Drawing”), but after some time the Applicant submits a different mark for the specimen.

21. Other Types of USPTO Office Actions

Some USPTO Office Actions are entered into the TEAS system and are not issued to you; generally, these are divided into Nonfinal and Final Office Actions.

A. Trademark Office Action Response to Nonfinal Office Actions

As the name states, a nonfinal Office Action is not a final disposition on the merits of a trademark application. A nonfinal Office Action requires an answer within three months. If you receive a nonfinal USPTO Office Action, you must completely respond to each legal issue raised by an Examining Attorney. If for any reason, the Examining Attorney raises a new issue for the first time after your nonfinal trademark office action response, you must respond.

B. Final Office Actions

By contrast, a final Office Action arises in situations where your Examining Attorney has already raised all issues with your application, and you did not satisfactorily respond. You may still respond to the final USPTO Office Action. It will be the final time to do so with your particular Examining Attorney during the application procedure. Again, the response to the trademark Office Action must individually satisfy each concern the Examining Attorney raised. Should the trademark Office Action response fail to do so and the Examining Attorney does not relent in withdrawing their refusal, the applicant may appeal to the Trademark Trial and Appeal Board (TTAB). 

It is possible to concurrently respond to the final Office Action and appeal.

There are other types of “Office Actions” which may arise.

C. Examiner’s Amendment

An Examiner’s Amendment means that the Examining Attorney made a minor change to your file after communicating with you. The Examiner’s Amendment is typically issued after speaking with you or your attorney by phone or email. There is no need to respond to an Examiner’s Amendment.

D. Notice of Incomplete Response

A Notice of Incomplete Response is a formal notice from the USPTO explaining that your application is missing a signature or other formality. You must respond either within 30 days of the issue date or within your three-month window.

E. Priority Action

A Priority Action is a written confirmation that your Examining Attorney communicated with you or your representative about specific legal requirements for your application. A Priority Action will list legal issues with your application, and how you can resolve these issues. Examining Attorneys issue Priority Actions to expedite your application. The deadline to respond is within three months from issuance.

F. Trademark Office Action to Suspension Letter

The USPTO will issue a Suspension Letter, which is a hold on your application, pending the outcome of events outside your application. Suspension Letters will issue for your application if there is already another application pending for the same or similar name. This is the only type of USPTO Office Action that does not require a response. However, you may respond to a Suspension Letter, or you may wait for matters outside of your application to resolve.

For instance, I take a proactive approach and submit a USPTO trademark Office Action response to Suspension Letters when it is strategic to do so. For instance, I have responded to a Suspension Letter that was held up pending two applications. One application was “abandoned,” and its owner could not file a Petition to Revive. The second application was not confusingly similar, and so I brought this to the Examining Attorney’s attention.

G. Suspension Inquiry

A suspension inquiry is a request to provide information about the reason for your suspension. Sometimes, the USPTO database may not contain all the relevant information about why your application was suspended. Your truthful response will allow the Examining Attorney to determine if your application should remain suspended or move forward.

22. Rescue a Trademark Office Action

Generally, there are three or so ways to save your trademark from a USPTO Office Action: (1) Speak to the USPTO; (2) attempt a trademark Office Action response yourself (not advised); or (3) speak to a qualified Trademark Office Action Attorney.

Email Your USPTO Trademark Examining Attorney

The USPTO is a federal agency, and as such the Examining Attorneys at the USPTO are not your attorneys. However, they are generally friendly and willing to guide up to a point. They may help direct you to resources that could help. However, they cannot provide legal assistance.

Use TEAS to Respond to the USPTO Office Action

1. Go to MyUSTPO.gov, and “Sign in” in the upper right-hand corner.
2. On the left-hand side, under “Trademark Form Finder” click on “Respond to correspondence from the USPTO.”
3. You will see a drop-down. Click on “Respond to Office Action from Law Office Examining Attorney.”
4. Enter your Serial Number, found in the email you received from the USPTO, into “Step 2.”

Speak to a USPTO Trademark Office Action Attorney

In short, contacting an experienced Office Action trademark attorney is the easiest, quickest, and cost-efficient solution. Most trademark Office Action attorneys charge competitive flat-fee rates and can tell you their cost upfront.

However, you may wonder why I say it is the most “cost-efficient solution.” The reason why it is less expensive is due to the difficulty of winning trademark Office Actions. It is also due to the success rate difference between going it alone and hiring an attorney. The reason why hiring a trademark Office Action attorney is advantageous is three-fold:

• (1) they encountered your trademark issue in the past;
• (2) an experienced trademark attorney knows precisely what the USPTO wants to see to move your application forward; and
• (3) attorneys responding to USPTO Office Actions can email or dial your Examining Attorney and receive a faster response.

As such, it is prudent to hire a trademark attorney Office Action Attorney. Even if you do not decide to go with my firm, please contact a licensed trademark attorney and not a filing company.

Rescue your Office Action and respond now with Syed Law.