7 Common Trademark Office Action Mistakes and How to Avoid Them

Filing a trademark application is an essential step in protecting your brand, but the process can be more complex than it seems.

Many applicants find themselves receiving office actions from the United States Patent and Trademark Office (USPTO), which are formal notices detailing issues or errors with an application.

These office actions can delay the approval process or even lead to rejection if not handled properly.

Whether it's a simple paperwork mistake or a more complicated issue like a likelihood of confusion with another mark, knowing what to avoid is vital to a smoother trademark filing experience.

In this article, I'll discuss the most common office action mistakes and provide practical steps for avoiding them.

1. Incomplete or inaccurate application details

Many applicants provide incorrect or incomplete information, such as listing the wrong entity type (e.g., applying as an individual instead of a business entity) or failing to accurately describe the goods/services associated with the mark.

Even minor errors, such as typos or misrepresentations, can result in an office action.

How to avoid

• Double-check all information before submitting your application, ensuring that the name, address, and entity type match official records.
• Review the USPTO's specific guidelines on accurately describing your goods/services. If you're unsure, using a trademark filing service like Trademarkia can help ensure accuracy.

2. Likelihood of confusion with an existing trademark

Filing for a trademark that is too similar to currently registered trademarks may cause consumer confusion.

The USPTO examines not only identical marks but also (1) similar-sounding, (2) similar-looking, or (3) conceptually similar marks, especially when they're in the same industry or class of goods/services.

How to avoid

• Conduct a comprehensive trademark search before filing. This search should include identical matches and variations in spelling, phonetics, and meaning.
• Tools like Trademarkia's search function can help identify a potentially conflicting trademark, and working with a trademark attorney can further clarify risks of confusion with existing marks.

3. Specimen rejection

A specimen is a real-world example of how you use the trademark in commerce.

Common mistakes include submitting unacceptable specimens, such as:

• Mock-ups,
• Promotional materials,
• Or materials that don't directly link the mark to the goods/services.

How to avoid

• Submit actual product labels, packaging, or screenshots of your website that clearly show your mark being used in connection with the sale of your goods/services.
• Make sure the specimen adheres to the USPTO's specific requirements, like using the mark to show its direct association with the product (e.g., not just in a slogan or business name).
• Advertisements, brochures, or website pages that describe the services rendered could be acceptable specimens for service marks.

Need to understand office actions a bit better? Read our article “Understanding Trademark Office Actions: A Beginner's Guide.”

4. Descriptiveness refusal

Filing for a trademark that merely describes a:

• Feature,
• Quality,
• Or characteristic of the goods/services offered.

For example, trying to register "Cold Beer" for a beverage company will likely be refused for being too descriptive.

How to avoid

• Choose a more suggestive, arbitrary, or fanciful mark. Suggestive marks hint at the nature of the product without directly describing it. In contrast, arbitrary and fanciful marks are highly distinctive and have no direct relation to the product (e.g., "Apple" for computers).
• If the mark is somewhat descriptive but has acquired distinctiveness through long-term use, provide evidence of "secondary meaning," showing that consumers directly associate the descriptive term with your brand.

5. Incorrect classification of goods/services

The USPTO requires you to list your goods/services in specific international classes.

Many applicants make the mistake of choosing the wrong class or including goods/services that don't belong in the selected class, leading to refusals.

How to avoid

• Carefully review the USPTO's classification system. There are 45 classes, with 34 for products and 11 for services. Each class has a precise description of what it covers.
• If your goods/services span multiple categories, filing in more than one class may be better, but be aware of additional filing fees.
• Trademark filing services or attorneys can assist in selecting the correct class, ensuring that your goods/services align with the USPTO's descriptions.

6. Failure to respond to office actions on time

Trademark applicants have six months to respond to a USPTO office action.

As a prospective trademark owner, failing to respond within this timeframe results in the application being abandoned, meaning the entire filing process must be restarted from scratch.

How to avoid

• Set up a reliable system to track your application status and pending deadlines.
• If you receive an office action, review it immediately or consult with a trademark attorney to ensure you respond well before the deadline.

7. Failing to address all issues raised

Some applicants only address part of the USPTO's concerns in their office action response, leading to another office action or rejection.

For example, responding to a descriptiveness refusal but ignoring a specimen issue could mean having to go through the process again.

How to avoid

• Carefully read through the entire office action letter, paying attention to every issue mentioned. Some issues are easy to overlook, especially if the letter is complex.
• It's often helpful to consult with a trademark attorney or filing service to ensure you're addressing all the concerns raised in the office action, as they may have experience in interpreting the language used by the USPTO.

Bonus tip: Using expert help for complex cases

For complex or nuanced trademark issues, enlisting the help of a trademark attorney or using professional filing services can make a significant difference.

Our experts deeply understand the legal intricacies involved in office actions and can help you navigate potential pitfalls, ensuring your responses are thorough and effective.

By leveraging their expertise, you increase your chances of overcoming rejections and securing your trademark with minimal hassle.

Glossary of legal terms

• Abandonment – Refers to an application being considered abandoned if the applicant fails to respond to an office action within the six-month deadline.
• Descriptiveness – Mentioned as a reason for refusal when a mark merely describes a feature, quality, or characteristic of the goods/services.
• Entity type – A required detail in the application, where errors such as listing the wrong entity type (e.g., individual vs. business) can lead to an office action.
• International classes – Refers to the classification system required by the USPTO, where goods/services must be accurately categorized in one of the 45 classes.
• Likelihood of confusion – Cited as a reason for rejection if the trademark is too similar to an existing registered mark, potentially causing consumer confusion.
• Office action – Defined as a formal notice from the USPTO detailing issues or errors with the trademark application.
• Specimen – Refers to an example showing how the trademark is used in commerce, where unacceptable specimens can result in rejection.