You Received a Trademark Office Action, Now What?

You Received a Trademark Office Action, Now What?
January 14, 2018 Kristin Grant






Have you received an office action from the United States Patent and Trademark Office (USPTO) in response to your submission of an application for U.S. trademark protection? Trademark office actions may be issued by a USPTO examining attorney for a number of reasons. The examining attorney may issue an office action to request amendments to the application, to request additional information, or to issue a refusal.

Office actions requiring amendments or additional information may include:

  • trademark disclaimer requirements
  • amendments to the identification of goods and services
  • consent from a living individual
  • substitute specimen required

Refusals may include:

  • likelihood of confusion refusal
  • geographically descriptive refusal
  • merely descriptive refusal

Some of these responses require a thorough understanding of trademark law and have a strict response deadline. Refusals are not necessarily the end of the line but may be overcome in some instances by submitting arguments and evidence in response to the refusal.

Contact a trademark attorney to gain a better understanding of what the communication requires and to discuss next steps.




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