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What Is A Trademark Office Action?

Updated: Jan 30, 2023

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

  • 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

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