Updated: Jan 30
An Office Action from the United States Patent and Trademark Office (USPTO) is how the USPTO notifies you that there is a deficiency in your trademark application and that they will refuse your application unless the deficiency is resolved.
The United States Patent and Trademark Office (“USPTO”) issues an Office Action in response to a trademark application when the USPTO’s Examining Attorney believes the application has a legal deficiency.
Office Actions generally include substantive and/or non-substantive matters that require further attention. Substantive matters include a refusal based on a section 2(d) likelihood of confusion determination or a section 2(e)(1) merely descriptive determination. Non-substantive matters include disclaiming a word or phrase, amending the goods/services description, or correcting the specimens.
Here’s more detailed lists on common substantive and non-substantive Office Actions:
Substantive Office Action requests
Likelihood of confusion
Arguing a disclaimer is not needed
Non-Substantive Office Actions
Claiming ownership of competing applications
Amending from 1(b) to 1(a) filing basis
Foreign word translation
Entity type revision
Adding or revising international class
Amending identification of goods or services
Revising to include proper specimens
Agreeing to a disclaimer request