Responding to an Office action
An Office action is a letter from the examining attorney listing what stands between your application and registration. How to read one, what the deadlines are, what your options are, and what happens if you miss it.
Most applications receive at least one Office action, a letter from the USPTO examining attorney explaining why the application cannot be approved as filed. An Office action is not a final decision, and many are resolved by a short response. It does have a hard deadline, and silence ends the application. Office actions are delivered by email and posted in the application's record in TSDR, the USPTO's status and documents system. If a letter about your application is not in TSDR, it did not come from the USPTO.
Read it for two kinds of issue
- Refusals are substantive objections to registering the mark. The common ones are likelihood of confusion with an existing mark under §2(d), mere descriptiveness under §2(e)(1), surname under §2(e)(4), failure to function as a mark, and a specimen that does not show the mark in use (15 U.S.C. §1052; 37 C.F.R. §2.56).
- Requirements are things to fix. Examples include an identification of goods that is too vague, a disclaimer of an unregistrable word (a statement that you claim no exclusive right in, say, "Coffee Co.," apart from the mark as a whole; 15 U.S.C. §1056), a translation, a mark description, or the owner's domicile address.
You must answer every refusal and requirement. A response that leaves one out is incomplete (37 C.F.R. §2.63).
Deadlines
| Situation | Deadline | Source |
|---|---|---|
| Application under §1 or §44 | 3 months from the issue date | 37 C.F.R. §2.62(a) |
| One extension for §1 or §44 | 3 more months (6 in total); $125, requested before the deadline | §2.62(a); §2.6(a)(28)(ii) |
| Madrid application under §66(a) | 6 months; no extension | §2.62(a) |
| Missed deadline | Application abandoned; petition to revive within 2 months of the notice of abandonment, $250, delay must be unintentional | 15 U.S.C. §1062(b); 37 C.F.R. §2.66 |
The deadline is stated in the Office action itself. Calculate from the issue date, not the date you read it. Fees are from the USPTO fee schedule.
Your options
- Comply. Accept the examining attorney's suggested wording for the goods, enter the disclaimer, supply the translation. Many requirements end here.
- Amend. Narrow the goods or services to avoid a conflict, substitute a specimen (37 C.F.R. §2.59), or change the filing basis from use to intent to use.
- Argue, with evidence. For §2(d), show how the marks or the goods differ, or how many others use similar marks for similar goods. For descriptiveness, show why imagination is needed to connect the mark with the goods. Evidence must be in the record before an appeal. The Trademark Trial and Appeal Board generally decides on what was filed during examination.
- Claim acquired distinctiveness under §2(f) for a descriptive mark that buyers already recognize as yours, or move to the Supplemental Register, which gives narrower rights.
- Resolve a conflict with its owner. A written consent agreement from the owner of a cited registration is evidence the examining attorney must weigh.
An examining attorney can also call or email to settle small points by examiner's amendment. That is legitimate when it comes from an @uspto.gov address and appears in TSDR.
After a final action
If the examining attorney is not persuaded, the next Office action is final. Within the same response period you may:
- file a request for reconsideration with new arguments or evidence (§2.63(b)); and
- file a notice of appeal to the Trademark Trial and Appeal Board, $225 per class, followed by an appeal brief, $200 per class (37 C.F.R. §2.6(a)(18); §2.141).
Filing both is common practice. The appeal keeps the application alive while the request for reconsideration is decided.
Who may respond
You may respond yourself if you are the applicant domiciled in the United States, or an officer who can bind the company (§2.62(b)). If you are domiciled outside the United States, a US-licensed attorney must respond for you (37 C.F.R. §2.11(a)).
Be wary of unsolicited offers to "handle" your Office action. People who have just received one are a known target of misleading solicitations. Check any message against TSDR before you pay anyone. See spotting trademark scams.
When an attorney earns their fee
Requirements about wording, disclaimers and translations are often within reach of a careful owner. An attorney earns the fee for substantive refusals, above all §2(d) and §2(e)(1), where the outcome depends on argument and on the record you build. The same is true after any final refusal, and where a decision affects other marks you own. Outcomes in examination vary more than the rules suggest. Studies have found wide differences between examining attorneys handling similar applications. A well-built response matters.
This guide is general information, not legal advice. For why precedent is thinner than it was, see our commentary on the vanishing TTAB precedent.