Responding to Office Actions

Types of Official Letters

The USPTO examining attorney may issue several different types of official letters about your application. Below is a description of each type and information on how to respond.

1. Office Action

An Office action issues to notify the applicant regarding issues with the application. This will include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office action within 6 months from the date the Office action is issued or the application will be abandoned.

There are two types of Office actions: non-final and final. A non-final Office action raises an issue for the first time. A final Office action issues when the applicant's response to the prior Office action fails to address or overcome all issues. An applicant's only response to a final Office action is either compliance with the requirements or appeal to the Trademark Trial and Appeal Board.

For more information about responding to an Office action, please watch the news broadcast-style video titled “Response to Office Action” (video #14 in the Trademark Information Network (TMIN) series).

2. Examiner's Amendment

An examiner's amendment is a written confirmation of an amendment made to an application. Unless the applicant disagrees with the amendment, the applicant need not respond.

3. Priority Action

A priority action issues after the examining attorney consults with the applicant regarding problems with the application. This will include the reason why registration is being refused or how to satisfy certain application requirements. Unlike an examiner's amendment, the applicant must respond to a priority action within 6 months from the date the priority action is issued or the application will be abandoned.

4. Suspension Letter

A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters; however, suspension inquiry letters do require a response.

Response Deadlines

Most responses to Office actions (official letters) must be received within 6 months from the mailing date on the Office action. In certain circumstances, the Office action will specify a different response period. There are no extensions to the deadline specified in the letter. Examining attorneys have no discretion to extend the time period for filing a response. If applicants do not submit a timely response to an Office action, their applications will be declared abandoned.

For more information about how to revive an abandoned application, please watch the news broadcast-style video titled “Petitions” (video #11 in the TMIN series).

How to File a Response

The USPTO strongly recommends filing a response electronically through the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/trademarks/teas/response_forms.jsp.  And TEAS Plus and TEAS RF applicants must file responses to Office Actions through TEAS, or they will be required to pay an additional processing fee of $50 per class of goods or services.  A full list of application-related submissions that TEAS Plus and TEAS RF applicants must file through TEAS can be found at the Reduced Fee FAQs page.

All forms filed via TEAS are time/date stamped when received on the USPTO server, according to Eastern Time (ET) and ET controls for purposes of determining the timeliness of a document. Any submission that arrives as of 11:59 p.m. ET will be given that day's filing date (i.e., regardless of the USPTO's "normal" business hours).

Responses may also be submitted by facsimile or regular mail. Applicants should address each issue raised by the examining attorney and include the applicant's name, mark, serial number, law office, and examining attorney in the body of the response. To ensure that a response is considered timely, an applicant may wish to add to the end of the response a properly completed "certificate of transmission" for responses submitted by facsimile or a properly completed "certificate of mailing" for responses submitted by mail. Applicants should retain a photocopy of the response with the signed certificate in the event that the response is lost or misplaced by the Office. See TMEP Section 306.05 for additional information on the certificate of transmission procedure and TMEP Section 305.02 for additional information on the certificate of mailing procedure.

Tips for Responding to a USPTO Office Action 
 

 

General Information About Responding
 

Filing a Trademark Application at the USPTO Starts a Legal ProceedingWhen an examining attorney issues a USPTO Office action (an official letter about your trademark), this means there are legal issues with respect to your trademark application.  This proceeding is governed by specific federal laws and rules.  The Office action may have technical rejections or “requirements” involving minor or procedural matters that you may fix by simple amendments, such as clarifying your goods or services; and it may have substantive rejections or “refusals” such as a refusal based on a likelihood of confusion between your mark and an already registered trademark.  Refusals are not always fixable.

Read Through the Entire USPTO Office Action:  Print out and read through the Office action several times to grasp the issues with your trademark application.  You may want to number each issue, so that you know how many issues you must respond to.  Do not be put off by legal references in the text.  The text before and after such references will explain the issue to you. 

Respond Timely (and Early): You must respond within six months from the date the Office action issued (or, for a Section 66(a) application, six months from the date the Office action was forwarded to the International Bureau) or your application will be considered abandoned.  Don’t wait until the end of the six months to respond.  Because filing deadlines are set by law, the examining attorney may not grant you an extension of time to respond, even if you experience difficulties in responding.  (If you miss your deadline and your application abandons, you may be able to revive it, but you must file a petition and a $100 fee to do so.)

Respond Completely:  Your response must address all the issues in the nonfinal or final Office action.  If you are responding to a final Office action, consider filing both (1) an appeal to the Trademark Trial and Appeal Board (TTAB) and (2) a direct response to the examining attorney, called a “request for reconsideration” (both must be timely filed to be considered).  If you are responding to a nonfinal Office action, file only a direct response to the examining attorney.  To file a direct response to the examining attorney, use the Trademark Electronic Application System (TEAS).  To file an appeal, use the Electronic Systems for Trademarks Trials and Appeals (ESTTA)

Consider Calling or E-mailing to Respond, if Appropriate:  For easily resolved issues, such as disclaimers and amending goods/services, consider calling or e-mailing to respond.  The Office action will usually suggest that you contact the examining attorney this way if appropriate.  Please note that your e-mails will be uploaded into your public application record and are accessible on the USPTO website.

Become Familiar with USPTO’s Rules and Procedure:  Take a look at the USPTO’s online manuals and videos available on the website to understand the applicable guiding rules and principles.  For example, use the Acceptable Identification of Goods and Services Manual (ID Manual) to search and draft listings of acceptable identifications of goods or services.  Or read the Trademark Manual of Examining Procedure (TMEP) for guidance on a particular issue, such as the section about how clear and detailed an identification of goods or services needs to be or about acceptable specimens for services.

Be Professional:  All parties are required to “conduct their business with decorum and courtesy,” according to the USPTO’s rules of practice.  See 37 C.F.R. §2.192.
 

Speak With the Right Person About Responding to the Office Action 
 

Examining Attorney: The Office action, near the end, shows the name and contact information of the examining attorney who reviewed your application.  This person is the most familiar with your application and is the best person to discuss any questions you have about your Office action.  Call or email the examining attorney only after you have read through the Office action and have specific questions.  If the examining attorney is not available (you reach voicemail, or receive an out-of-office e-mail), please wait at least one business day for a response.  If he/she is out for an extended period, their voicemail and e-mail message should so indicate and will include contact information for their supervisor. 

Supervisor of Examining Attorney: Contact the supervisor only if you have an imminent deadline and cannot reach the examining attorney; note, however, that the supervisor will not be familiar with your application or issues and may need time to review your application.  Also, the supervisor may not approve an examiner’s amendment, and generally will not make a determination about a substantive issue.  You may also contact an examining attorney’s supervisor if you think an error in examination has occurred and it cannot be resolved through further discussion with the examining attorney, or if the examining attorney is out of the office for an extended period of time.

Trademark Electronic Application System (TEAS) Staff:  If you have technical issues when using the online response form in TEAS, please email TEAS@uspto.gov(link sends e-mail) for assistance.  Technical issues include how to attach evidence, Internet browser issues, and how to ensure that USPTO emails reach you. 

Trademark Assistance Center (TAC) Staff:  For general information about the trademark application process that is not related to a particular application, call toll free at 1-800-786-9199 or email TrademarkAssistanceCenter@uspto.gov(link sends e-mail).
 

General Information Regarding Content of Responses 
 

Argue Your Interpretation of the Evidence: An examining attorney may include and discuss evidence to support a requirement and/or refusal.  For example, an examining attorney may include evidence consisting of trademark registrations owned by third parties.  These registrations may show that the same registration owner often provides various goods, suggesting that these goods are related; or they may show that particular wording is always disclaimed in registrations, which is a concession by the registration owner that the wording is descriptive.  Check the examining attorney’s evidence (1) to see if it is relevant, and confirm (2) that any trademark registrations are use-based and specific to the relevant goods or services at issue and that the registrations are “live.”  (3) You may also provide your own evidence to support your contrary interpretation or analysis of the situation and also explain any problems with the examining attorney’s evidence and analysis.  For example, you could put in the record evidence of your own knowledge of the particular industry or field that shows that goods or services are not related, or that certain terminology is not descriptive.

Educate the Examining Attorney About your Field/Industry:  You are the expert in your field, so explain the field or marketplace for your goods/services when arguing against any refusals or requirements.  If possible, submit brochures, printouts of webpages, catalogs, documentation, and any other evidence explaining how your industry or field works.

Avoid Conclusory or Broad Arguments without Evidence to Support It:  When arguing against a refusal, make specific, fact-based points about why the examining attorney should withdraw the refusal.  Include any helpful evidence that supports your argument.

Information Regarding Responding to Some Specific Legal Issues

 

Requirement for “definite” identification of goods/services: 

What is it?  This is one of the most common issues with applications – when the description of the goods and services with which your mark is or will be used is unclear, indefinite, and/or too broad.  This may affect other aspects of the application, such as fees, dates of use, and specimens.

Review suggestions in the Office action for amending/revising the goods/services.  Do any of the suggestions accurately describe your goods/services? If a suggestion 100% accurately reflects your goods or services, you must still respond to the Office action to give your approval to amend the identification to the suggested wording.  If not, review the examining attorney’s reasons why your identification is not acceptable and then use the USPTO’s online Identification (ID) Manual, which is a searchable list of acceptable wording for goods/services and their classification, to help you revise your identification and properly classify your goods/services.  Use synonyms for your goods/services when searching the ID Manual for accurate and acceptable wording.

Plain non-technical language is preferred for identifications of goods and services.  Avoid industry jargon.

What is a “definite” identification of goods/services? It is specific, clear, accurate, concise, and uses terminology that the average person will generally understand. This is necessary to provide public notice regarding your mark and the industry in which you are or will be using your mark.  Additionally, it enables the USPTO to classify your goods/services properly and to conduct a search and reach an informed judgment regarding whether your mark as used or to be used in connection with specific goods/services is likely to cause source-confusion with an already-registered mark for specific goods/services.  See discussion below regarding a Section 2(d) “likelihood of confusion” refusal.

Relationship between your goods/services and a specimenIf your application is or will be based on use in commerce, that is, if you have a Section 1(a) or Section 1(b) filing basis, you will be required to provide a specimen showing how you actually use your mark with your goods/services; therefore, you will want to ensure the identification of goods/services that you list in the application is accurate.

Relationship between your goods/services and application fees:  The application filing fee and other related application fees are based on the number of international classes of goods/services in your application.  If your identification of goods/services is not definite and could be interpreted as identifying goods/services in additional international classes, the examining attorney may require that you pay additional fees, if revising your identification of goods/services results in your adding international classes to the application.

You may want to educate the examining attorney as to your goods and services and the industry in general, especially if the examining attorney’s suggestions for goods/services seem odd or off-base.  You are the expert in your field and have the inside knowledge of your industry that you may share with the examining attorney.

Can you “undo” subsequent changes to your goods/services?  No.  Once you make changes or deletions to your identification that the examining attorney accepts, you may not change back to your original identification.  At all times, you may further narrow the scope of your identification or delete further items, but you may not broaden your identification or add items. 

Should you include your mark in your identification?  No.  Use only generic or descriptive everyday wording to identify your goods/services.  Also, do not include anyone else’s mark in your identification of goods/services.

Requirement to “disclaim” a portion of your mark: 

What is it?  A “disclaimer” is a statement that you do not claim exclusive rights to a particular term(s) and/or design element(s) in your mark.  Disclaimers are generally for particular terms and/or designs that are not registrable matter (such as descriptive wording, e.g., the mark BOB’S CAFÉ for restaurant services would need a disclaimer of CAFÉ because it is descriptive, if not generic, for such services).  A disclaimer does not change how your mark appears.

Why must you submit a disclaimer?  Some words or designs in a mark are not registrable because other people/business need them to describe their goods, services, and/or business without the threat of a possible lawsuit.  A disclaimer in your application (and resulting registration) makes it clear to others that they may use the disclaimed terms and designs without raising legal objections.

What is unregistrable matter in your mark?  Wording/designs that are merely descriptive or generic or geographically descriptive, business type designations (e.g., “corp.”), informational matter (e.g., net weight, addresses and contact information), well-known symbols (e.g., Rx for prescriptions), and deceptively misdescriptive wording or designs that describe your goods/services in a way that is believable but false.

What does a disclaimer look like?  This is the standard wording for a disclaimer:  “No claim is made to the exclusive right to use apart from the mark as shown.”

How to submit a disclaimer using TEAS


Section 2(d) “likelihood of confusion” refusal: 

What is it?  The USPTO issues this refusal when, after searching the USPTO database of registered marks, the examining attorney finds one or more already-registered trademarks in which the mark and goods/services are similar to yours. 

You may want to check the status of cited registered marks to see if they are still “live” -- if they are no longer live, they are not a bar to your registration and you should let the examining attorney know.  Use the Trademark Status and Document Retrieval System to check the status using the registration number.

Are the compared marks are similar?  This refusal is partially based on the compared marks being confusingly similar in appearance, meaning, sound, or overall commercial impression.  They do not have to be identical.  So, compare the marks for yourself.  If you do not think they are similar, you may want to explain your own reasoning why you think they differ in your response.

Are the goods/services of the cited registrations similar/related to yours?  This refusal is also based on the compared goods/services being sufficiently similar or related such that, if the confusingly similar marks appeared on such goods/services of the parties, consumers would be confused as to the source of the goods/services.  You are the expert of your field or industry, so you may want to educate the examining attorney as to how, if appropriate, your goods/services are different or unrelated to those goods/services in the registrations such that consumers would not think the goods/services come from the same source.

Could you overcome the refusal by amending the goods/services to narrow the field of use?  In some cases, limiting your goods/services to a particular field of use may avoid confusion.  Discuss this with the examining attorney first prior to amending because, once limited, the identification generally may not later be amended back to the original wording.

Could you overcome the refusal by getting a consent agreement from the registrant?  Some applicants or their attorneys negotiate a consent agreement from the registration owner – consenting to your use and registration of your mark and agreeing no likelihood of confusion exists.  This is a legal document that will place affirmative duties upon you and the other party, so you may wish to discuss this with an attorney experienced in trademark law.  And remember: the examining attorney has no authority to suspend prosecution to give you time to negotiate any consent agreement.

 

Section 2(e) “descriptiveness” refusal:

What is it?  The USPTO issues this refusal when the examining attorney finds evidence showing that all the wording in the mark (and/or the design element) merely describes some aspect of the goods/services, for example, “creamy” for yogurt, or “New York Bagels” for bagels made in New York.  The reason for the refusal is that, generally, businesses and competitors need to be free to use descriptive language when characterizing their own goods/services to the public.

Do you disagree that your mark is descriptive?  If so, you may want to submit arguments and evidence as to how the wording and/or design does not describe your goods/services. Explain in detail your reasoning. You are the expert in your field and have the inside knowledge of your industry, and therefore can explain and prove why the wording is not descriptive of the goods/services in your field.

Do you agree with the refusal? You still have options.  You may be able to register your mark by amending your application to claim “acquired distinctiveness under Section 2(f)” or by amending from the Principal Register to the Supplemental Register. The examining attorney will likely suggest one or both options in appropriate circumstances. Because no evidence is required to amend to the Supplemental Register, this is the easiest option, but amending to this Register does not provide all of the advantages of registration on the Principal Register, so you should research this option first.  (The Supplemental Register is not an option for Section 66(a) applications.)  Evidence is usually required to add a Section 2(f) claim, and such a claim may only be made under particular conditions for a Section 1(b) “intent-to-use” application. 

Is amending to the Supplemental Register or Section 2(f) always an option to overcoming a Section 2(e) refusal?  No.  If your mark is not only descriptive, but also generic for the goods/services, then your mark may not be registered under any circumstances. Examples of generic marks include “bicycle” for bicycles or retail bicycle stores, “milk” for a dairy-based beverage, or “foot-long” for foot-long sandwiches.

Would narrowing the field of use of your goods/services overcome the refusal?  Yes, in some cases, limiting your goods/services to specify a particular field of use may overcome the refusal.  But, you may want to discuss this option with the examining attorney since, once acceptably limited, the goods/services may not be changed back.

 

Specimen Refusal:

What is it?  A specimen refusal issues when technical or substantive problems exist with the specimen submitted to show your use of your mark in connection with the goods/services.  Your applied-for mark must appear on the specimen and the specimen must be in actual use in commerce.  Examples of acceptable specimens for goods and examples of acceptable specimens for services may help you understand the concept of a proper specimen.

What are the common technical issues with specimens? That the mark does not appear on the specimen or if it does appear, it differs from the mark as shown on the drawing. Or, although the specimen shows the mark, it does not reference the services, or the specimen shows the mark used with goods/services different from those in the application.  Another issue is where the specimen is a “mock up” that is not actually used in the marketplace. Or, the specimen may be an inappropriate type, such as advertising for goods (advertising is not an acceptable specimen type for goods, only services).

What are the common substantive specimen issues? The most common is when the specimen does not show the applied-for mark “functioning as a trademark” to indicate the source of the goods/services.  That is, consumers encountering the mark on the specimen would not see it as indicating the source of the goods/services.  Even though you might intend certain wording to be a trademark, consumers may not perceive it that way.  Instead, the proposed mark might be informational matter or a commonly used phrase having no source indicating significance (“Have a nice day”), or it might be perceived as mere ornamentation or adornment on the front of a t-shirt or coffee mug.  Another substantive specimen issue arises when the applied-for mark is used only as the title of a single book or CD, instead of the name for a series.  Or it is the name of a process or system used to make the goods or used in the rendering of the services, instead of a source indicator of goods or services.

How should you respond to a specimen issue? Usually you must submit a different specimen (called a “substitute” specimen) that meets the stated requirements.  You could submit multiple different specimens to increase the odds that one of them will be acceptable.  You are encouraged to provide an explanation of what the specimen consists of and how it is used.  The substitute specimen must have been in use in commerce as of a certain date, which you will attest to in a signed declaration.  If you disagree with the examining attorney’s reasoning for refusing the specimen, you may also argue that the specimen is acceptable, explaining your reasoning.  Certain substantive refusals, including an ornamentation refusal, have particular response options, which the Office action will specify, when appropriate.

Are specimen refusals always fixable?  No.  While an applicant may receive multiple opportunities to submit an acceptable substitute specimen, circumstances may exist when the applicant may be unable to overcome the specimen refusal.  For example, if the identification of goods/services does not accurately reflect the goods/services that the applicant offers, then the applicant will be unable to submit a specimen that shows use of the mark with the goods/services listed in the application. 

What are the requirements for an acceptable specimen? To be acceptable, a specimen must: (1) Show the proposed mark in use in connection with the identified goods/services listed in the application; (2) Depict the applied-for mark as shown on the drawing; (3) Show the mark in actual use in commerce (not a “mock up” or printer’s proof of how it will be used in the future); (4) Be an appropriate type of specimen (e.g., advertising material is not acceptable for goods); and (5) Show the applied-for mark functioning as a trademark or service mark; that is, it must be used in a manner that consumers would perceive as a source indicator.

How to submit a specimen using TEAS.