Office Action

Top Office Action Refusals and Strategies to Get Your Trademark Application Approved

In Trademarks by Stacey Kalamaras

Have you recently applied for a trademark with the United States Patent and Trademark Office (USPTO) and received an Office Action, and aren’t sure how to respond or what this means?  An Examiner with the USPTO will review your application to make sure it complies with all rules and regulations.  If there are any issues with your application or your mark, you will receive a letter from the USPTO – this is called an Office Action – asking you to correct all deficiencies – before your application can be approved and ultimately register.

An application can be refused for many different reasons – ranging from minor administrative issues to serious substantive refusals of registration.  I’m going to discuss the top 4 reasons your application can be held up in the examination process and give you some of the strategies we employ to quickly get your application back on track toward registration.

The goods or services are not properly defined

The USPTO is very picky about how you describe your goods or services. If the Examiner should object to how you described your goods or services, he or she will usually offer a suggestions for how you can fix the description.  You can then submit a response with these amendments.  Usually, the Examiner’s suggestions are relatively accurate, but at least give you a good idea for how you can be in compliance.  If you consulted the Trademark ID Manual when filing, you usually won’t have an issue at this stage.  One thing to note, is that after you file, you can only narrow your goods or services.  You may never expand them.

Your specimen has been refused

If you filed your trademark based on use in commerce, you must submit evidence that you are using your trademark in use in commerce.  Often, specimens are refused because applicants fail to show actual use of the trademark in connection with the goods or services.  For goods, you must show use of the mark on tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods. For services, you must show a direct association between the mark and the services on advertising and marketing materials, brochures, photographs of business signage and/or billboards, or webpages that show the mark used in the actual sale, rendering, or advertising of the services.  When submitting specimens for services, remember the services must be provided to third parties.  For more information about specimens, please see our blog post here.

Substantive Refusal: Likelihood of Confusion

This is a very serious substantive refusal where the Examiner has found that your mark conflicts with an earlier filed or registered mark for the same or similar goods or services.  This type of refusal can be avoided by conducting a search prior to filing.  For more information on searching, please see our blog post here.  A trademark attorney can help you with this search and analyze the results. To overcome this type of refusal, you’ll want to hire an experienced trademark attorney to review all of your available options to try and overcome the refusal – for instance, is the earlier mark still in use, has that owner filed all of its required maintenance documents on time, are there legal arguments to be made to distinguish the marks?  These are only some of the legal strategies to consider.  Every case is different, but each one involves sophisticated arguments and you are not likely to be successful making them on your own.  But if you do venture out on your own, do not respond immediately, take your time, do your research, make the best arguments you possibly can, considering the law.  You usually have six months to respond, use your time wisely.

Substantive Refusal: Merely Descriptiveness

This refusal claims that your mark is not entitled to registration on the Principal Register because it does not function as a distinctive trademark.  These types of marks fail to function as a source identifier to one company with a showing of acquired distinctiveness.  A few examples of these kind of marks are: THE SALAD STATION for restaurant services, YOUR CLOUD for a cloud computing services, and THE BABYSITTING COMPANY for caregiving services. Again, this type of refusal can usually be avoided by consulting a trademark attorney before you adopt such a mark. If you are using a descriptive mark in commerce at the time the refusal issues, the mark can be registered on a secondary register, called the Supplemental Register, which may still provide some rights to you.  Depending on the mark, your trademark attorney, may be able to argue that instead the mark is suggestive and entitled to registration as a distinctive trademark.


There are many other types of substantive refusals, but likelihood of confusion and merely descriptiveness are the most common some of the most difficult ones to overcome.  But, remember, most of these substantive refusals can be avoided by doing a bit of research at the outset.  By working with an experienced trademark attorney when choosing your mark, she can advise you of what potential issues lie ahead.  Responding to Office Actions makes the process more expensive and much more lengthy.  Working with an attorney up front may avoid many of these issues and make the process run more smoothly.

If you require assistance with your trademark application or have any questions about this post, please contact us.