TIPS for Responding to a USPTO Office Action


AnchorGeneral Information

Filing a Trademark Application at the USPTO Starts a Legal Proceeding:  When a USPTO trademark examining attorney issues an Office action about your trademark, the Office action indicates that there are legal issues with respect to your trademark application.  This proceeding is governed by specific U.S. 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 Office Action:  Print out and read through the Office action several times to understand 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 these references will explain the issue to you. 

Respond Timely (and Early): You must respond within 6 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.  Do not wait until the end of the 6 months to respond.  Filing deadlines are set by law and an 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 with a petition filing 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 System for Trademark 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 responding by calling or e-mailing the examining attorney.  The Office action will usually suggest contacting the examining attorney, if appropriate.  Please note that your e-mails will be uploaded into your application record and are accessible to the public on the USPTO website.

Become Familiar with USPTO’s Rules and Procedure:  Take a look at the USPTO’s online manuals and videos to understand the applicable guiding rules and principles for trademark applications.  For example, use the Trademark ID 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.

AnchorSpeak with the Right Person

Examining Attorney: The Office action, near the end, lists 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, his/her voicemail and e-mail message will include contact information for his/her supervisor. 

Supervisor of Examining Attorney: Contact an examining attorney's 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.  Additionally, you may contact an examining attorney’s supervisor if you think an error has occurred during examination and it cannot be resolved through further discussion with the examining attorney, or if the examining attorney is out for an extended period of time.

TEAS Staff:  If you have technical issues when using the online response form in TEAS, please email 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 sends e-mail).

AnchorContent of Responses

Argue Your Interpretation of the Evidence: An examining attorney may include and discuss evidence to support a requirement and/or refusal in an Office action, such as including registrations owned by third-parties.  Third-party registrations may be used to show that the same registration owner provides various goods, suggesting specific goods are related; or that particular wording is always disclaimed in registrations, in which the registration owner concedes the wording is descriptive. 

You may provide your own evidence to support your interpretation or analysis of the situation and explain any problems with the examining attorney’s evidence and/or 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 at issue 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 Them:  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.

AnchorSpecific Legal Issues


AnchorRequirement 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 your identification of goods/services.  Do any of the suggestions accurately describe your goods/services? If a suggestion to amend your identification 100% accurately reflects your goods/services, you must respond to the Office action to give your approval before the identification may be amended to the suggested wording.  If the proposed suggestions are not accurate, review the examining attorney’s reasons why your identification is not acceptable and then use the USPTO’s online ID Manual 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 using industry jargon.

What is a “definite” identification of goods/services? It is an identification that is specific, clear, accurate, concise, and uses terminology that the average person will generally understand. Your identification 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 specimen:  If 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 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 for adding international classes to the application.

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

Can you “undo” subsequent changes to your goods/services?  No.  Once you change or delete goods/services from your identification and the examining attorney accepts those changes/deletions, 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.

AnchorRequirement 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., in the mark BOB’S CAFÉ for restaurant services, a disclaimer would be required for CAFÉ because it is descriptive, if not generic, for restaurant 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/businesses also need to use 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 orgeographically 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 are all unregistrable matter.

What does a disclaimer look like?  The following 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 
Specific guidance for how to submit a disclaimer using TEAS is available online.

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

Are the compared marks similar?  This refusal is partially based on the examining attorney’s comparing your mark with a registered mark to determine if the marks are confusingly similar in appearance, meaning, sound, or overall commercial impression.  The marks do not have to be identical.   In your response, you may want to explain why you think the marks differ.


Are the goods/services of the cited registrations similar/related to yours?  This refusal is also based on the examining attorney’s comparing your goods/services with the registered goods/services to see if they are sufficiently similar or related, such that if the confusingly similar marks appeared on the goods/services of the parties, consumers would be confused as to the source of those goods/services.  In your response, you may provide the examining attorney information regarding how, if appropriate, your goods/services are different or unrelated to those goods/services in the registrations.

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 an agreement from the registration owner in which the registered owner consents to your use and registration of your mark and agrees that 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 think your mark is not descriptive?  If so, in your response, you may want to submit arguments and evidence as to why the wording and/or design in your mark does not describe your goods/services. Explain your reasoning in detail. You are the expert in your field and know your industry; therefore, you can explain why the wording and/or design in your mark is not descriptive of the goods/services in your field.

Do you agree that your mark is descriptive? If so, you still have options.  You may still be able to register your mark by amending your application to claim “acquired distinctiveness under Section 2(f)” or by amending your application from the Principal Register to the Supplemental Register. In appropriate circumstances, the examining attorney will likely suggest one or both options. 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 the advantages of registration on the Principal Register.  (Amending to the Supplemental Register is not an option for Section 66(a) applications.)  To add a Section 2(f) claim, evidence is usually required, 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?  The USPTO issues this refusal when technical or substantive problems exist with the specimen that you submitted to show your use of your mark in connection with the goods/services (or if you omitted a specimen entirely when one was required).  Your applied-for mark must appear on the specimen and the specimen must be in actual use in commerce for the goods/services listed in your application.  Examples of acceptable specimens for goods and examples of acceptable specimens for services may help you understand what constitutes a proper specimen.

What are common technical issues with specimens? One common issue is 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 your goods/services, or the specimen shows the mark used with goods/services different from those in your application.  Another issue is where the specimen is a “mock up” or printer’s proof that is not actually used in the marketplace. Or, the specimen may not be an appropriate 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 issue is when the specimen does not show the applied-for mark “functioning as a trademark” to indicate the source of your goods/services.  That is, consumers encountering your 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 the goods or services.

How should you respond to a specimen refusal? Usually you must submit a different specimen (called a “substitute” specimen) that meets the requirements for a proper specimen.   In your response, you are encouraged to provide an explanation of what the substitute specimen consists of and how it is used.  You may also submit multiple different substitute specimens to increase the odds that one of them will be acceptable.  The substitute specimen must have been in use in commerce as of a certain datewhich you will attest to in a signed declaration.  If you disagree with the examining attorney’s reasoning for refusing the specimen, you may argue why you think the specimen is acceptable, explaining your reasoning.  Certain substantive refusals, including an ornamentation refusal, have particular response options, which the examining attorney will specify in an Office action, 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 you may not be able to overcome a specimen refusal.  For example, if your identification of goods/services does not accurately reflect the goods/services that you offer, then you will not be able to submit a substitute specimen that shows use of the mark with the goods/services you failed to list in your application. 

What are the requirements for an acceptable specimen? An acceptable specimen must: (1) show your mark in use in connection with the identified goods/services listed in your application; (2) depict your mark as shown on the drawing; (3) show your 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 for services not goods); and (5) show your 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
Specific guidance for how to submit a specimen using TEAS is available online.