Types of Office Actions: Refusals, Requirements, and What to Expect

An office action is an official letter issued by the United States Patent and Trademark Office (USPTO) after reviewing your trademark application.

It outlines any issues or objections to your filing that must be addressed before your trademark can proceed toward registration.

Understanding the types of office actions and how to respond effectively can determine the success of your application.

Below, I:

• Break down the main types of office actions,
• What they involve,
• And what you can expect in the process.

1. Refusal office actions

A refusal occurs when the USPTO examiner finds legal grounds preventing your trademark's registration. This can happen for several reasons:

• Likelihood of confusion: Your mark may be deemed too similar to an existing registered trademark.
• Descriptiveness: Your trademark may be considered too generic or merely descriptive of your goods and services.
• Immoral or deceptive matter: Trademarks that are misleading or offensive may also be rejected.

In the case of a refusal, you have the option to submit a legal argument or modify your application to address these concerns.

A well-structured response is crucial to overcoming refusals.

2. Requirement office actions

Requirements are procedural or formal issues identified in your application that must be corrected or clarified.

Unlike refusals, they don't necessarily prevent your mark from being registered, but they must be resolved before the application can move forward. Common requirements include:

• Amendments to the description: Clarifying vague language in the goods or services description.
• Specimen requirements: Providing a better example of how the trademark is used in commerce.
• Disclaimer statements: Adding a disclaimer for any non-distinctive wording in the mark (e.g., "Inc.," "Co.," or descriptive terms).

Requirement office actions are typically easier to address, as they usually involve submitting additional documentation or adjusting the language in your application.

Looking to understand office actions better? Learn more in our article “Understanding Trademark Office Actions: A Beginner's Guide.”

3. Final vs. non-final office actions

Non-final office actions are the USPTO's initial communications outlining specific issues with a trademark application, such as:

• Conflicting marks,
• Unclear descriptions,
• Or classification errors.

These issues aren't final determinations but rather an invitation to resolve the examiner's concerns. You have up to six months to respond by:

• Providing clarifications,
• Modifying the application,
• Or submitting additional evidence.

If the response sufficiently addresses all points, the application moves forward toward registration.

Final office actions are issued if your initial response fails to resolve the key issues raised.

A final office action indicates the examiner's position remains unchanged and requires a more formal response.

This is your last chance to act before the application is considered abandoned.

To proceed, you can either:

• File a request for reconsideration,
• Make further amendments (if allowed), or appeal to the Trademark Trial and Appeal Board (TTAB).

Each option has different procedural requirements and strategic considerations, so addressing a final office action typically demands a more in-depth legal approach.

What to expect after receiving an office action

When you receive an office action, it’s essential to act quickly and efficiently.

Failing to respond within the six month timeframe I mentioned earlier will result in the abandonment of your application. The response should:

• Clearly address each point raised by the examining attorney,
• Provide any necessary documentation,
• And make a compelling case for why your mark should proceed.

For complex refusals, it might be best to seek professional assistance from a trademark attorney to increase your chances of success.

Secure your trademark — get in touch with an IP attorney

Office actions are a normal part of the trademark registration process, and responding promptly and effectively is crucial.

Understanding whether you're facing a refusal or a requirement will help you determine the best course of action to secure your trademark registration.

If you're unsure how to proceed, reach out to Trademarkia's IP attorneys for support with your office action.

Glossary of legal terms

• Abandonment – Mentioned in relation to not responding to an office action within six months.
• Amendment – Described as changes to the application, such as modifying descriptions of goods or services.
• Disclaimer statement – Explained as a requirement to disclaim non-distinctive terms in the mark.
• Examining attorney – Implied in references to the USPTO and the person reviewing applications.
• Final office action – Differentiated from non-final actions, explaining it as a last chance to respond.