If you or your business has filed an application with the United States Patent and Trademark Office (“USPTO”) to register a trademark, at some point in the review process, you might receive an “Office Action” from the examining attorney. An “office action” sounds mysterious, but an office action is simply a formal communication — a notice or letter — from the USPTO. Broadly, an office action can relate to matters of procedure — such as a fee has not been paid or a form has not been completed — or it can relate to substantive legal matters — such as the proposed trademark cannot be registered for various reasons.

Timely responses to USPTO office actions are required

As noted, an office action is a formal communication from the USPTO. As such, the Trademark Office expects and requires a response to the office action and a correction of whatever deficiency is identified. For example, if a fee has not been paid, the applicant should not only pay the required fee, but send a response to the office showing proof of payment. Likewise, if a form has not been completed or evidence is missing from the application, then the form should be completed, the additional documentation added, and an official response stating what has been done.

Generally speaking, an application to register a trademark will be “paused” after an office action has been sent. The application “starts again” when the response is received. This means that, if an official response is never received, the application will languish and eventually be deemed to be abandoned.

Note further that an official response should be timely. Usually, the Trademark Office will give six months for a response (with extensions granted under some circumstances). However, the deadlines can be shorter.

How to respond to a USPTO office actions

As the examples discussed above indicated, how to respond to a USPTO office action depends on what the office action says. Procedural issues are relatively easy to “fix” — pay the fee, complete the form, get the signature, upload the documents, ask for more time, etc.

On the other hand, substantive issues can be much more difficult to handle and might involve the need for significant legal expertise. For example, if the examining attorney believes the proposed trademark is unregistrable, a lengthy and well-argued written legal response may be needed to persuade the examining attorney that he or she is in error. Further, at such a point, applicants and trademark counsel may need to “think strategically” about whether to appeal and how to position for the best chance to win an appeal if a denial is forthcoming from the examining attorney. Alternatively, the best response might be to modify the trademark and amend the application or to withdraw the application entirely. Depending on the “problem,” other potential solutions may be available such as entering a licensing agreement or a coexistence agreement with another trademark holder.

Common Types of Substantive Office Actions

Understanding the most frequently issued substantive office actions helps applicants anticipate and respond to them effectively. The two most common grounds for a substantive office action are Section 2(d) likelihood of confusion refusals and Section 2(e) descriptiveness refusals.

A Section 2(d) refusal arises when the examining attorney determines that the proposed mark is likely to be confused with an already-registered mark. The legal standard, drawn from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), requires the examiner to weigh 13 factors, including the similarity of the marks in appearance, sound, and meaning; the similarity of the goods and services; the channels of trade; and the sophistication of consumers.

Responding to a 2(d) refusal typically requires arguing that the marks are sufficiently distinct to avoid consumer confusion, and/or that the goods and services are distinct enough that confusion is unlikely. Evidence of third-party uses of similar marks can help narrow the scope of the cited mark’s protection. In some cases, a consent agreement from the owner of the cited mark — in which both parties agree to coexist without confusion — can be presented to the USPTO as evidence that confusion is unlikely.

A Section 2(e)(1) mere descriptiveness refusal arises when the examiner determines that the proposed mark merely describes a feature, characteristic, function, or purpose of the goods or services. The classic response is to argue that the mark is suggestive rather than descriptive — meaning it requires some mental leap to connect the mark to the goods rather than immediately conveying a characteristic. An alternative response is to submit evidence of acquired distinctiveness under Section 2(f), showing that through years of exclusive use and promotion, consumers have come to associate the mark with the applicant’s business.

The TTAB Appeal Process

If the examining attorney issues a final refusal and the applicant wishes to continue pursuing registration, the next step is to appeal to the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative court within the USPTO that hears appeals of final refusals and also decides opposition and cancellation proceedings. TTAB proceedings are conducted on written submissions — there are no live witnesses or oral argument in most cases, though oral argument may be requested and is sometimes granted.

The TTAB applies the same legal standards as the examining attorney but reviews the record de novo, without deference to the examiner’s conclusions. This means that well-reasoned legal arguments and strong evidence submitted in the TTAB appeal can succeed even when the same arguments were rejected by the examining attorney. TTAB decisions are publicly available through the USPTO’s website and create precedent that applies in future cases.

If the TTAB affirms the refusal, the applicant has two options: appeal to the U.S. Court of Appeals for the Federal Circuit (on the record already developed before the USPTO) or appeal by civil action to a federal district court (which allows for the submission of new evidence and expert testimony). The district court route is generally preferable when the case involves disputed facts or when additional evidence could change the outcome.

Working With a Trademark Attorney on Office Action Responses

While applicants can respond to office actions without an attorney, the stakes are high enough that most applicants are well-served by working with experienced trademark counsel. A well-crafted response to a 2(d) refusal may require analysis of hundreds of third-party registrations, preparation of detailed legal arguments, and strategic decisions about whether to appeal and how to position for the best chance to win. A response to a 2(e) descriptiveness refusal may require gathering substantial evidence of use, consumer declarations, and marketing materials. Both types of responses must be filed within the USPTO’s deadline — typically three months for TEAS Plus applications, with extensions available — and a missed deadline results in abandonment of the application.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.