USPTO Office Action? What It Means and Your Options

What Is a USPTO Office Action?

An office action is the USPTO’s written notice that your application has problems the examining attorney will not approve as filed. In the USPTO’s words, “an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself.” You answer in writing, and the examining attorney reviews the application again.

The statute sets up that back-and-forth: “If the applicant is found not entitled to registration, the examiner shall notify the applicant thereof and of the reasons therefor. The applicant may reply or amend the application, which shall then be reexamined” (15 U.S.C. § 1062(b)(1)).

An office action can raise two kinds of problems:

• Requirements. These are fixes to the application itself, such as a clearer description of your goods or services or a disclaimer of a descriptive word.
• Refusals. These are objections to the mark, such as a refusal because it is likely to be confused with a registered mark or because it merely describes your goods.

The USPTO’s guidance on office actions also describes letters that look similar but ask less of you. An examiner’s amendment confirms a change you approved by phone or email. A suspension letter puts the application on hold. The title at the top of the letter tells you which one you have.

How Long Do You Have to Respond to an Office Action?

The deadline is printed in the office action itself: “Each Office action shall set forth the deadline for response” (37 C.F.R. § 2.62(a)). I suggest reading that date first, because every other step depends on it. The rule’s general periods are quoted below so you can check them against the letter.

The rule’s periods apply “Unless the applicant is notified otherwise in an Office action.” For an ordinary application filed directly with the USPTO, the rule sets the period at “Three months from the issue date, for an Office action in an application under section 1 and/or section 44 of the Act” (37 C.F.R. § 2.62(a)(1)(i)). An extension is available: “the time for response designated in paragraph (a)(1)(i) of this section may be extended by three months up to a maximum of six months from the Office action issue date, upon timely request and payment of the fee” (37 C.F.R. § 2.62(a)(2)). The request must be on time too: “To be considered timely, a request for extension of time must be received by the Office on or before the deadline for response set forth in the Office action.” An application filed through the international Madrid system under section 66(a) has a different period under 37 C.F.R. § 2.62(a)(1)(ii). Because these periods can change by rule, I suggest checking the current text of 37 C.F.R. § 2.62 and the date in your letter rather than relying on any summary, this one included.

How you file matters as much as when. “Unless stated otherwise in this chapter, all trademark correspondence must be submitted through TEAS” (37 C.F.R. § 2.23(a)), the USPTO’s online filing system. A response sent another way does not count: “Responses and requests for extensions of time to respond sent via email or facsimile will not be accorded a date of receipt” (37 C.F.R. § 2.62(c)). The date that counts is set by the East Coast clock: “The filing date of an electronic submission is the date the Office receives the submission, based on Eastern Time” (37 C.F.R. § 2.195(a)). Minnesota is on Central Time, so a response sent late on the evening of the deadline can carry the next day’s date, and I suggest filing well before that evening. The USPTO also expects you to watch your own file, because “Notices issued or actions taken by the USPTO are displayed in the USPTO’s publicly available electronic systems” (37 C.F.R. § 2.23(d)).

What Is the Difference Between a Non-Final and a Final Office Action?

A non-final office action is the examining attorney’s first or continuing statement of a problem, and you answer it with argument, evidence, or an amendment. A final office action is the last word at the examining stage. After a final action that maintains a refusal, the options narrow to a request for reconsideration, an appeal to the Trademark Trial and Appeal Board (TTAB), or an extension request.

Non-final. If your answer does not resolve everything, the examining attorney can issue another non-final action, and “the applicant may submit a timely response to the action” (37 C.F.R. § 2.63(a)(1)). Each round is another chance to add evidence or narrow the application.

Final. “Upon review of a response, the examining attorney may state that any refusal to register or requirement is final” (37 C.F.R. § 2.63(b)). The rule then lists what you may file in time, including “An appeal to the Trademark Trial and Appeal Board,” a request for reconsideration, or an extension request (37 C.F.R. § 2.63(b)(1)). The appeal right comes from the statute: “An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks” (15 U.S.C. § 1070). “An appeal is taken by filing a notice of appeal . . . and paying the appeal fee” (37 C.F.R. § 2.142(a)(3)), and if the fee is not paid for at least one class before the time for appeal runs out, “the application will be abandoned” (37 C.F.R. § 2.141(c)). The notice starts the appeal, and the appellant’s brief is due later on the schedule in 37 C.F.R. § 2.142(b)(1); if the brief is late, “the appeal may be dismissed.”

Two rules make the final stage unforgiving. First, “Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition” (37 C.F.R. § 2.63(b)(3)). Second, “Filing a request for reconsideration that does not result in the withdrawal of all refusals and requirements, without the filing of a timely appeal or petition, will result in abandonment of the application for incomplete response” (37 C.F.R. § 2.63(b)(4)). The USPTO’s guidance notes that “Applicants often file both an appeal to the TTAB and a direct response to the final office action.” A requirement you do not appeal comes first: “All requirements made by the examining attorney and not the subject of appeal shall be complied with prior to the filing of an appeal” (37 C.F.R. § 2.142(c)). An appeal also has a record rule: “The record should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal” (37 C.F.R. § 2.142(d)). To add evidence after appealing, the appellant “should submit a request to the Board to suspend the appeal and to remand the application for further examination” (37 C.F.R. § 2.142(d)(1)). I suggest putting evidence you want weighed in with the response or the reconsideration request.

When an owner with a final likelihood-of-confusion refusal asked me whether to seek reconsideration or appeal, my answer turned on what was in dispute. Reconsideration is the route when there is something new to put in front of the examining attorney. An appeal is the route when the disagreement is with the conclusion drawn from the record. I also suggested holding off on contacting the owner of the cited registration and on changing the application, because both can affect what is available later.

What Happens When an Office Action Goes Unanswered?

The application is abandoned. “An application will be abandoned if an applicant fails to respond to an Office action, or to respond completely, within the relevant time period for response,” a period that includes “any granted extension of time to respond” (37 C.F.R. § 2.65(a)). A response that skips one issue can have the same result as no response at all.

Two parts of the rule soften that result in narrow cases:

1. Partial abandonment. “If all refusals and/or requirements are expressly limited to certain goods and/or services, the application will be abandoned only as to those goods and/or services” (37 C.F.R. § 2.65(a)(1)). The rest of the application can continue.
2. Substantially complete responses. When a timely response “is a bona fide attempt to advance the examination of the application and is a substantially complete response to the examining attorney’s action, but consideration of some matter or compliance with a requirement has been omitted,” the examining attorney may allow time to supply the omission (37 C.F.R. § 2.65(a)(2)). The word is “may,” so I suggest answering every numbered issue the first time rather than counting on this rule.

The USPTO’s guidance states the cost plainly: “Your application fees will not be refunded and your trademark will not register.” The statute deems the application abandoned “If the applicant fails to reply or amend or appeal within the relevant time period, including any extension under paragraph (3),” but it adds an exception. The application is abandoned “unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the application may be revived and such time may be extended” (15 U.S.C. § 1062(b)(2)).

The rule for revival reads: “The applicant may file a petition to revive an application abandoned in full or in part because the applicant did not timely respond to an Office action or notice of allowance, if the delay was unintentional” (37 C.F.R. § 2.66(a)). The petition has its own deadline, which the rule states as “Two months after the issue date of the notice of abandonment in full or in part,” or, for an applicant who declares that it did not receive the notice of abandonment, “Two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full or in part” (37 C.F.R. § 2.66(a)(1)-(2)). I suggest checking the current text of 37 C.F.R. § 2.66 the day you learn of an abandonment, because the rule requires the petition by not later than that deadline.

The petition must include the fee, “A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional,” and the response itself (37 C.F.R. § 2.66(b)). If the office action was subject to a three-month response period “and the applicant does not assert non-receipt of the Office action or notification,” the petition must also include the fee for a request for extension of time to respond (37 C.F.R. § 2.66(b)(4)). If the abandonment came after a final office action, the response is treated as a request for reconsideration, and the applicant must also file a notice of appeal to the TTAB or, where permitted, a petition to the Director, or else “A statement that no appeal or petition is being filed from any final refusal or requirement” (37 C.F.R. § 2.66(b)(5)). An applicant may instead state that it never received the office action, but that claim works once: the applicant “may not assert non-receipt of the same Office action or notification in a subsequent petition.” For what happens once an application stays dead, see registering a dead or abandoned mark.

How Do You Answer a Likelihood-of-Confusion Refusal?

A likelihood-of-confusion refusal under section 2(d) says your mark is too close to a registered mark used on related goods or services. You can answer it by showing the marks or the goods differ, by narrowing your goods or services, by obtaining the other owner’s consent, or by removing the cited registration. The USPTO advises that “you should make specific, fact-based points about why the examining attorney should withdraw the refusal or requirement.”

The bar is in 15 U.S.C. § 1052(d): a mark that “so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” The leading list of factors comes from In re E. I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). There, the court reviewing a section 2(d) refusal listed thirteen factors that, “when of record, must be considered,” and wrote that “it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” The first three factors are how alike the marks are in appearance, sound, connotation, and commercial impression; how related the goods or services are; and whether they move through the same trade channels. The court added that “The evidentiary elements are not listed above in order of merit.”

The routes for answering, in the order the USPTO’s guidance lists them:

1. Argue the marks differ. Show differences in appearance, sound, meaning, or overall impression, with evidence.
2. Argue the goods or services differ. Compare your goods or services as your application lists them with those the cited registration lists, and explain your industry where that helps the examining attorney understand them. The Federal Circuit has held that “The relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration,” “and not on real-world conditions,” and that trade channels “must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world” (In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018)). I suggest building this argument on the wording of the two identifications rather than on how either business sells today.
3. Narrow your goods or services. The rule permits amendments “when required by the Office or for other reasons,” within one limit: “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services” (37 C.F.R. § 2.71(a)). The USPTO says an accepted narrowing generally cannot be changed back, so I suggest deciding on it only after the other routes are weighed.
4. Seek a consent agreement. The USPTO cautions that “an examining attorney can’t give you extra time in the response period to get consent. Although consents are given serious consideration, they do not always overcome this refusal.” DuPont explains why the agreement’s detail matters: “In considering agreements, a naked “consent” may carry little weight,” while “The weight to be given more detailed agreements of the type presented here should be substantial.”
5. Check the cited registration. The USPTO says a cited registration that is “dead” no longer bars yours and suggests letting the examining attorney know.

A cited registration that is still on the register but whose mark has been abandoned is another opening. A petition to cancel may be filed “At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned” (15 U.S.C. § 1064(3)). While that proceeding runs, examination may be put on hold: “Action by the Office may be suspended for a reasonable time for good and sufficient cause,” and a suspension request “filed within the response period” may be “considered responsive to the previous Office action” (37 C.F.R. § 2.67). When an owner with a likelihood-of-confusion refusal asked me for guidance, one route I raised was this one: if the cited mark was no longer in use or had been abandoned, a cancellation proceeding at the TTAB might remove it, with the application suspended while the cancellation proceeded.

For the factors in more depth, see how likelihood of confusion is judged. For the next filing, a clearance search finds conflicts like this one before the application is filed.

How Do You Answer a Descriptiveness Refusal?

A descriptiveness refusal under section 2(e)(1) says your mark merely describes a feature, quality, or purpose of your goods or services. You can argue the mark is not descriptive, claim the mark has acquired distinctiveness through use, or, once the mark is in lawful use in commerce, move the application to the Supplemental Register. An intent-to-use application can make that move only after an acceptable allegation of use, whose filing date then becomes its effective filing date. Narrowing the goods or services sometimes helps as well.

The bar covers a mark that, “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them” (15 U.S.C. § 1052(e)(1)). Whether a word crosses that line depends on where a name falls on the distinctiveness spectrum. The USPTO’s guidance for this refusal is to “Make specific, fact-based points about why you believe the wording and/or design in your trademark does not describe your goods or services and submit any relevant evidence.”

Acquired distinctiveness. Section 2(f) provides that “Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” The statute gives one kind of proof: “The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” (§ 1052(f)). The USPTO’s guidance cautions that a section 2(f) claim “is not available when your trademark is both descriptive and generic for your goods or services.” For the evidence that claim takes, see acquired distinctiveness under section 2(f).

The Supplemental Register. The Supplemental Register is a second federal register for marks “capable of distinguishing applicant’s goods or services and not registrable on the principal register,” with exceptions that include marks barred by section 2(d), and it is open to those marks “which are in lawful use in commerce by the owner thereof” (15 U.S.C. § 1091(a)). An intent-to-use application has an added step and cost on this route: “An application under section 1(b) of the Act may be amended to change the application to a different register only after submission of an acceptable amendment to allege use . . . or statement of use,” and on a move to the Supplemental Register “the effective filing date of the application is the date of the filing of the allegation of use” (37 C.F.R. § 2.75(b)). The USPTO’s guidance describes the trade-off: “Amending to the Supplemental Register is the easiest option as it does not require evidence, but the Supplemental Register does not provide the same advantages as the Principal Register.” I suggest weighing that trade-off against how much the name is worth to your business. The Supplemental Register route asks for no evidence, requires lawful use in commerce, and gives fewer advantages, and for an intent-to-use application it moves the effective filing date to the date of the allegation of use.

How Do You Overcome a Specimen Refusal?

A specimen refusal says the sample you filed does not show the mark in actual use with the goods or services listed. You overcome it by explaining why the specimen is acceptable or by filing a substitute specimen with a verified statement about when it was in use. Before publication, an applicant may also substitute a basis, such as intent-to-use, and unless the record contradicts a continuing valid basis, the application keeps its original filing date. Some specimen refusals cannot be cured, for example when the goods you sell are not the goods you listed.

A specimen must show “the mark as actually used in commerce on or in connection with the goods or services identified” (37 C.F.R. § 2.56(a)), and “use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark” (15 U.S.C. § 1127). The rule separates goods from services:

• Goods. “A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods,” and “To constitute a display associated with the goods, a specimen must show use of the mark directly associated with the goods and such use must be of a point-of-sale nature” (37 C.F.R. § 2.56(b)(1)). The USPTO’s guidance states that “advertising material is an acceptable specimen for services, but not for goods.”
• Services. “A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services,” and “The specimen must show a direct association between the mark and the services” (37 C.F.R. § 2.56(b)(2)).
• Form. A “clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an actual specimen” is acceptable. “A web page must include the URL and access or print date,” and the rule bars “An artist’s rendering, a printer’s proof, a computer illustration, digital image, or similar mockup of how the mark may be displayed,” which “are not proper specimens” (37 C.F.R. § 2.56(c)).

A substitute specimen carries a sworn date. For a use-based application, “The applicant must submit a verified statement that the substitute specimen was in use in commerce at least as early as the filing date of the application” (37 C.F.R. § 2.59(a)). An owner whose mark was not yet in use on the filing date has another route under the rule on bases: “Before publication for opposition, an applicant may add or substitute a basis, if the applicant meets all requirements for the new basis” (37 C.F.R. § 2.35(b)(1)). On a substitution, such as from use to intent-to-use, “the Office will presume that there was a continuing valid basis, unless there is contradictory evidence in the record, and the application will retain the original filing date” (37 C.F.R. § 2.35(b)(3)). For an intent-to-use application, the verified statement ties the substitute’s use to the amendment to allege use or the statement of use instead (37 C.F.R. § 2.59(b)). The USPTO’s guidance is candid: “You might not be able to overcome a specimen refusal.” For the patterns behind these refusals, see the specimen problems that most often draw a refusal and examples of specimens that show use.

How Do Identification and Disclaimer Requirements Work?

An identification requirement asks you to describe your goods or services in clearer, more specific words, and a disclaimer requirement asks you to state that you claim no exclusive right in a descriptive part of the mark. The USPTO’s guidance says that “If you decide to agree with a refusal or requirement, you may adopt, if provided, the language or resolution the examining attorney suggests.”

Identification. You may change the description only “to clarify or limit, but not to broaden, the identification of goods and/or services” (37 C.F.R. § 2.71(a)). The USPTO’s guidance adds that “Once you change or delete goods or services from your identification and the examining attorney accepts those changes or deletions, you can’t change a subsequent identification back to the original one.” Goods you leave out now need a new application later, so I suggest checking the suggested wording against everything you sell or plan to sell before accepting it.

Disclaimers. “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable” (15 U.S.C. § 1056(a)). The USPTO’s own example is the word CAFÉ in a mark like BOB’S CAFÉ for restaurant services: other cafés need that word, so the owner disclaims it while still registering the whole mark. A disclaimer does not change how the mark looks on the registration.

Who Can Respond to an Office Action, and What Help Is Available?

If you have no attorney, you or someone with authority to bind your business signs the response, and joint owners all sign. The USPTO answers process questions but does not advise on what to say. An attorney licensed in a U.S. state can prepare and sign the response for you.

Signing it yourself. When the owner has no qualified attorney, “the individual owner or someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership) must sign” (37 C.F.R. § 2.193(e)(2)(ii)). The same paragraph adds: “In the case of joint owners who are not represented by a qualified practitioner, all must sign.” The USPTO’s guidance warns that if the wrong person signs, “the USPTO will issue you a notice of incomplete response,” and that an improperly signed submission could lead to abandonment.

USPTO help. The USPTO runs a Trademark Assistance Center. The center calls itself “the main support center for all customers, from first-time filers to legal professionals and experienced trademark applicants,” and the USPTO’s office action page says “TAC staff can answer general questions about the trademark application process, how to navigate the USPTO website and online systems, and technical issues related to using TEAS response forms” for you. Its page lists what it will not do, starting with “Advising applicants on proper responses to USPTO office actions.” The examining attorney named at the end of your office action can answer specific questions about it, and the USPTO points to its Trademark Manual of Examining Procedure (TMEP) to help you understand a particular issue.

Hiring an attorney. The USPTO states that “Only attorneys licensed to practice in the United States and in good standing with a bar of the highest court of a U.S. state or territory can represent you in a trademark matter at the USPTO and sign responses.” When an attorney represents you, “the practitioner must sign, except where the owner is required to sign the correspondence” (37 C.F.R. § 2.193(e)(2)(i)). I prepare office action responses for Minnesota owners for a flat fee, quoted after I read the office action, so you know the full cost before deciding. The office action is already on the USPTO’s public record, so the serial number is enough for me to read it.

What Should You Do First When an Office Action Arrives?

I suggest four steps the day the letter arrives, because each one protects the deadline.

1. The deadline. The response date is printed in the office action. I suggest calendaring it with a reminder well before it, because an extension request also has to arrive by that date (37 C.F.R. § 2.62(a)(2)).
2. Every issue, numbered. I suggest listing each refusal and requirement, because a response that misses one can lead to abandonment under 37 C.F.R. § 2.65(a).
3. A decision on each issue. For each one, the choice is to accept the examining attorney’s suggestion, argue with evidence, amend, or pursue another route described above.
4. Filing through TEAS. The response goes through the USPTO’s online system with the right signer, because email and fax filings receive no filing date (37 C.F.R. § 2.62(c)).

If you would like me to prepare the response, email [email protected] with a brief description and the application’s serial number, and I can start an intake and conflict check before you send any other documents, then quote a flat fee for the response. For other trademark questions, see my Minnesota trademark practice page.