Trademark office action response

What an office action is

After you file, a USPTO examining attorney reviews the application. If the examiner finds a problem, the USPTO sends an office action that lists each issue and explains the reasoning. It is not a final decision. It is a request for you to fix the problem or argue against it, within a set time.

Common reasons for one

• The mark is descriptive. The examiner thinks the name only describes the goods or services, which the USPTO treats as weak ground for a registration.
• Likelihood of confusion. The examiner thinks consumers could mix your mark up with one already registered or filed earlier.
• A specimen problem. The proof of use you sent does not show the mark the way the USPTO requires.
• An unclear description. The wording of your goods or services is too broad or too vague to accept.

An application can receive more than one of these in a single action. Each issue needs its own answer.

The deadline

A response is usually due within three months of the date on the office action, and one three-month extension is available for a fee. Do not plan around the extension. It adds cost, and the first reading of the action often takes more time than people expect.

What we do

1. Read the office action and every document the examiner cites.
2. Tell you in plain words what each issue means and what the options are.
3. Prepare the response. Depending on the issue, that can mean arguing against the refusal, narrowing the description, adding a disclaimer or replacing the specimen.
4. File the response before the deadline and track what the USPTO does next.

Some objections can be overcome and some cannot. If the examiner is not persuaded, the USPTO can issue a final action, and we explain the choices at that point. We do not promise an outcome.

What it costs

We quote a flat price for responding to an office action. Call or send your details for the quote. You see it before you agree, so there is no hourly meter running. If your action turns out to need work beyond the usual reply, we tell you the price before we start.

What you do

• Send us the office action the day it arrives. The USPTO sends it to the email address on your application, so check your spam folder if you expect one.
• Tell us anything the examiner got wrong about how you use the name.
• Hold off on contacting the examiner yourself until we have talked.

If the deadline is missed

An application that does not get a timely response is abandoned. Revival may be possible within a limited time, but it is not certain. Read how to revive an abandoned application for what that involves.

Related pages

Not filed yet? Start with registering a trademark, and see why a clean description helps in trademark classes explained. You can also run a name through the free trademark search to see similar marks before you file.

This is general information, not legal advice.