What Is A Trademark Office Action?

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.

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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

• Merely descriptive

• Distinctiveness

• Arguing a disclaimer is not needed

• Ornamentation refusal

• Missed deadline

• Specimen audit

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