After filing, all trademark applications are reviewed by a USPTO examiner. In case there are some issues identified, you receive an Office Action explaining the grounds for refusal.
Grounds for Trademark Office Actions
An examiner may issue an Office Action based on one or multiple grounds. These grounds will be detailed in the Office Action, and they generally fall into two categories:
Non-substantive Issues (usually minor deficiencies that can be corrected). For instance:
- Specimen issues
- Disclaimer requirements
- Description of the mark
- Translation requirements
- Identification or classification of goods and services
- Missing or insufficient information about the legal entity or individual
From January 2025, the USPTO introduced a $100 per class surcharge for missing information in trademark applications. This is why careful reviewing all application details before submission is important. For instance, if an applicant fails to provide the domicile of their legal entity and the trademark application includes three classes, they will be required to pay a $300 surcharge to correct the omission. To avoid unnecessary fees and delays, it is best for applicants to thoroughly review their applications before filing.
The second category of grounds of refusals – substantive grounds, for instance:
- Likelihood of Confusion with an existing registered mark
- Descriptiveness or lack of distinctiveness
- Deceptive trademark
- Trademark consists or a name, or portrait identifying a particular living individual without their consent
- Trademark that is primarily merely a surname
- Other statutory refusals
You might also be interested: Why a Trademark Search Matters: Avoiding Costly Conflicts
Deadline to Respond to a Trademark Office Action
Typically, an applicant must respond to a Trademark Office Action within three (3) months from the issuance date. However, this deadline can be extended by an additional three months for a USPTO extension fee.
For Madrid Protocol applications designating the U.S., the response deadline is six (6) months from the date on which the notification was sent to WIPO (World Intellectual Property Organization).
General Considerations When Receiving an Office Action
Trademark refusal may be:
- partial (for some goods or services)
or
- full (for the list of all goods and services).
If you receive an Office Action, here’s what you need to know:
- A First Office Action is not final. To avoid abandonment, you must submit a timely response.
- If you fail to respond, your trademark application will be abandoned. If you received partial trademark refusal, the application will be abandoned only to goods or services identified in the refusal.
- If you respond on time but the examiner finds your arguments unpersuasive, you will receive a Final Office Action, which still allows for further response options.
Need Help Responding to an Office Action?
If you receive an Office Action and need legal consultation or assistance in responding, you can contact Ortynska Law:
Email: [email protected]
Phone: +1 (914) 703-5632
Trademark lawyer Mariya Ortynska offers a free review of your Office Action and works on a flat-fee basis to respond to USPTO Office Actions.