How Do You Submit a Response to Trademark Office Action?

Trademark Office Actions can be confusing, but they’re a normal part of the process. Whether it’s a similarity to another mark, lack of distinctiveness, or a technical error, we’ll walk you through the common reasons and how to respond effectively.

Common reasons for trademark Office Actions

Let’s explore some of the most common reasons for actually receiving a trademark non-final Office Action (or even a final trademark Office Action).

You may get an Office Action if:

• Likelihood of confusion: The examining attorney has determined that your mark is too similar to an existing registered trademark or a pending application, which could confuse consumers.
• Your mark lacks distinctiveness: It might be considered generic (e.g., "Computer" for a computer brand) or merely descriptive of the goods or services (e.g., "Fast Cars" for a luxury vehicle manufacturer).
• Specimen issues: Your specimen may not adequately show how the trademark is being used in commerce.
• Incorrect trademark classification: You may have selected the wrong class under the Nice Classification System and need to correct it.
• Affiliation with unlawful goods or services: If your trademark is connected to restricted or prohibited items, it could trigger an Office Action.

There are numerous other potential issues, and addressing them can often be complex. That's why consulting a registered trademark attorney is crucial to navigating the process and ensuring a successful registration.

Understanding the deadline for response

In the United States, when the United States Patent and Trademark Office (USPTO) issues an Office Action regarding a trademark application, the applicant is normally required to respond within three months from the issue date of the Office Action.

If additional time is needed, applicants can request a one-time, three-month extension by filing the appropriate form and paying a $125 fee.

8 steps to submitting a trademark Office Action response

1. Understand the Office Action 

Start by identifying whether the Office Action is non-substantive or substantive. Non-substantive Office Actions typically address minor issues such as missing signatures or incorrect classifications, while substantive Office Actions raise concerns related to registrability, including likelihood of confusion, descriptiveness, or refusals based on existing trademarks.

2. Review your application

Carefully compare the details of your original application with the issues outlined in the Office Action. This step involves checking for any errors, inconsistencies, or missing information that might have contributed to the identified concerns.

3. Gather supporting evidence

If the Office Action involves substantive issues like descriptiveness or distinctiveness, it is crucial to collect relevant evidence to strengthen your case. Such evidence may include proof of use in commerce, customer reviews or testimonials, and market research or sales data that demonstrate the mark’s distinctiveness or usage.

4. Draft your response

Use the USPTO's Trademark Electronic Application System (TEAS) to prepare and submit your response. For non-substantive issues, correct the identified errors, supply the missing details, and follow any specific instructions provided. For substantive issues, address each concern systematically. For instance, if the issue is likelihood of confusion, focus on demonstrating differences in the marks and the associated goods or services. If descriptiveness is the concern, provide evidence that the mark has acquired distinctiveness or argue that it is suggestive rather than merely descriptive.

5. Include legal arguments

If applicable, cite relevant trademark laws, USPTO guidelines, or case law to strengthen your position with the Trademark Trial and Appeal Board (TTAB). Keep arguments clear, concise, and professional.

6. Meet the deadline

Submit your response within three months of the Office Action date. As mentioned earlier, if needed, file for a three-month extension.

7. Proofread and submit

Double-check your response for accuracy and completeness. Ensure that any attachments (e.g., evidence, corrected forms) are properly labeled and uploaded. And then, submit through the TEAS portal and save a copy of your response for your records.

8. Monitor your application

After submission, the USPTO will review your response. Be prepared for possible follow-up actions (and a possible final Office Action).

What happens after you submit your response?

After submitting your response to a trademark Office Action, the examining attorney at the USPTO reviews it to determine if the issues have been resolved.

If successful, the application moves to publication in the Official Gazette, where the public has 30 days to oppose it.

If no oppositions are filed, the mark proceeds to registration (for use-based applications) or to a Notice of Allowance (for intent-to-use applications).

If the response is deemed insufficient, a Final Office Action may be issued, which can be challenged through a Request for Reconsideration or an appeal to the Trademark Trial and Appeal Board (TTAB).

This process typically takes several weeks to months.

Submit your trademark Office Action, keep the process in motion

While there may be bumps in the road, they’re often a usual part of the trademark registration process. Start today, submit a well-crafted Office Action on your own, or with the help of a licensed trademark attorney, and ensure your brand gets the protection it deserves.