An Overview of USPTO Office Actions

by | Aug 20, 2018 | Trademark


Approximately three months after the moment when you file your trademark application and pay your fee, you may receive an email advising you that an office action has been assigned to your application. An office action is the USPTO’s way of informing applicants that there is a problem (or problems) with the application. The good news is that most office actions can be resolved. Here’s what you need to know.

Office Actions for Application Errors

The trademark registration application is not like a tax return – it is fairly straightforward and does not usually ask for especially exotic information. Nevertheless, it is possible to make an error in the application that can generate an office action. Errors can include harmless things such as giving the wrong zip code. Other errors can be more serious, such as the name of the owner is actually the name of an entity whose ownership of the mark is not entirely clear. Examiners generally do not undertake independent investigations to confirm the identity of ownership. However, if there is sufficient information in the application to raise a question, then they will issue an office action before proceeding.

Office Actions for Descriptive Marks

Office actions refusing registration on the grounds that the mark is merely descriptive probably make up the bulk of registration refusals. A refusal to register due to descriptiveness means that the USPTO has determined that the mark as it is used on the goods or services merely describes the nature or characteristic of those services or goods. This is not ideal for trademarks as their main purpose is to distinguish the source of products for consumers. If it is fairly obvious from the mark what is being sold or offered, it is less likely for the public to figure out who is actually making the product. “” for computer sales may seem like a great idea, but the USPTO will send it right back for descriptiveness.

A descriptiveness refusal can be overcome in several different ways. You can try to argue that the mark as it is used is not descriptive. This is usually unsuccessful as the examining attorney usually includes some internet research showing how the term is synonymous with the good or service. The most successful way to get around this is to offer a disclaimer or seek to register the mark under Section 2(f) if it has been used in commerce for five years or more. This “use presumption” is built into the Lanham Act to allow marks that may have started life as descriptive marks to still become registered if they have been used long enough that consumers recognize them as a unique source identifier.

Office Actions for Likelihood of Confusion

These are by far the hardest office actions to overcome because the likelihood of confusion is very much a subjective question. This means that likelihood of confusion is in the eye of the beholder, or the examining attorney. Of course, there is numerous likelihood of confusion refusals that are no-brainers as they are identical or virtually identical to the mark and goods or services. Some others, however, are much closer calls. One raging debate for decades now is whether the name of a restaurant and a wine can be confusing since wine is usually served in restaurants.

The key to remember about office actions is that if you do not respond to them within six months of the date they are issued, the application is deemed abandoned, and any chance you had of getting a registration is gone. This is why it is vitally important to have counsel assisting you every step of the way with a registration application to ensure you have the best possible chance to obtain the registration. Here at EmergeCounsel we know the USPTO process and can help you get through it. Let us help you today.


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