U.S. Trademark Office Action

Introduction

The USPTO may issue a Trademark Office Action during the U.S. trademark registration process. An Office Action is an official communication from a trademark examining attorney identifying issues that must be resolved before a mark can be approved for registration. These issues may include conflicts with existing trademarks, errors or omissions in the application, or refusals based on the mark being merely descriptive.

Applicants must respond to the Office Action within three months from the date of issuance by addressing the examiner’s concerns and presenting arguments or amendments in support of registration. Failure to respond within the prescribed time may result in abandonment of the application.

This article provides an overview of Trademark Office Actions and guidance on how to respond effectively. Auriga Accounting pvt. ltd. offers end-to-end assistance for U.S. trademark registration, helping you navigate Office Actions and complete the process smoothly.

What Is a Trademark Office Action in the U.S.?

A Trademark Office Action is an official communication issued by the United States Patent and Trademark Office (USPTO) notifying an applicant of issues or requirements related to their trademark application. These issues may concern the registrability of the trademark or deficiencies within the application itself.

Types of Trademark Office Actions

There are two primary types of Office Actions issued by the USPTO:

Non-Final Office Action:
This is the USPTO’s initial response to the application. It outlines the examiner’s concerns and provides the applicant an opportunity to correct errors, submit additional information, or present legal arguments.
Final Office Action:
If the applicant does not adequately address the issues raised in a non-final Office Action, the USPTO may issue a Final Office Action. This limits the applicant’s response options and may require filing an appeal or a request for reconsideration.

Reasons for Issuance of a Trademark Office Action

The USPTO may issue an Office Action for several reasons, including:

Likelihood of Confusion:
The proposed trademark is too similar to an existing registered or pending mark for related goods or services, potentially confusing consumers.
Descriptiveness:
The trademark merely describes the characteristics, qualities, or purpose of the goods or services and lacks distinctiveness.
Genericism:
The term is commonly used to identify a category of goods or services rather than a specific brand.
False Suggestiveness:
The trademark falsely implies a feature, quality, or origin that the goods or services do not possess.
Defective Application:
Errors or omissions such as incorrect identification of goods and services, missing information, or unpaid fees.

Common Types of Trademark Refusals

Some of the most common refusals issued in a Trademark Office Action include:

Likelihood of Confusion Refusal:
This is the most frequent refusal. The USPTO evaluates factors such as similarity in appearance, pronunciation, meaning, and the relatedness of goods or services.
Descriptiveness Refusal:
Descriptive terms that merely describe a product’s features, ingredients, quality, or intended use cannot be registered as trademarks. Trademarks must distinguish a brand, not claim ownership over descriptive language.

Tip: Conducting a comprehensive trademark search before filing can help identify potential conflicts and reduce the risk of refusal.

Common Types of USPTO Requirements

In addition to refusals, the USPTO may impose certain requirements, including:

Clarity Requirement:
Requesting clearer depiction or description of the mark, particularly for stylized or design marks.
Specimen Requirement:
Requesting additional or corrected specimens to demonstrate proper use of the trademark in commerce.
Identification of Goods and Services Requirement:
Seeking clarification or amendment to how goods or services are described in the application.

How to Respond to a Trademark Office Action in the U.S.

Applicants may respond to a Trademark Office Action in the following ways:

1. Response via Phone or Email

For minor legal or procedural issues—such as clarifying goods or services—the examining attorney may recommend resolving them through a phone call or email. This can help expedite the registration process. Note that all communications are recorded and made publicly available in the USPTO database.

2. Online Response Through TEAS

Most Office Action responses must be submitted electronically via the Trademark Electronic Application System (TEAS).

Use the TEAS Response to Office Action form for non-final actions.
Use the TEAS Request for Reconsideration after Final Action form for final actions.

Ensure the correct form is used and that the response is signed by an authorized party.

Who Can Sign the TEAS Response?

Without an Attorney:
The applicant may sign (individual applicant, partner, corporate officer, or LLC member).
With an Attorney:
If a U.S.-licensed trademark attorney is appointed, only the attorney may sign the response. Submissions signed by unauthorized individuals will be rejected, regardless of the content.

Deadline for Filing a Response

Standard Applications:
A response must be filed within three months of the Office Action issue date. A paid extension of three additional months may be available.
Madrid Protocol (Section 66(a)) Applications:
The response deadline is six months, with no extensions permitted.

Always review the specific Office Action to confirm the applicable deadline.

What Happens After You Respond?

After reviewing your response, the USPTO may take one of the following actions:

Approval:
If the response is satisfactory, the application proceeds toward registration.
Final Rejection:
If issues remain unresolved, the USPTO may issue a final refusal. The applicant may appeal to the Trademark Trial and Appeal Board (TTAB).
Additional Non-Final Office Action:
The USPTO may raise further concerns or requirements for clarification.

About the Author

Dakesh

Dakesh simplifies complex legal regulations into practical, easy-to-follow guidance, helping entrepreneurs remain compliant while confidently building sustainable and scalable businesses.

February 1, 2026