What Happens After You File a USPTO Trademark Application: Understanding USPTO Office Actions by Hannah Lee

You file your USPTO trademark application and wait for it to move through the USPTO review process. After filing, applications typically sit in a queue for, at the time of this article, 5-6 months before an examining attorney reviews it. After that first examination, you may receive a notice called an “Office Action.” That can feel unsettling at first, but it is a normal part of the process. A large percentage of applications receive at least one Office Action, and the USPTO’s system is designed to give applicants a clear chance to address any issues that come up within a set response period. If the issues are resolved, the application moves forward; if not, the USPTO may issue a follow-up Office Action, including, in some cases, a final Office Action.

What Is an Office Action?

An Office Action is the USPTO’s formal written communication identifying questions, defects, or legal refusals in a trademark application. Office Actions generally fall into two broad categories, and the notice will specify what type of issue is being raised.

• Procedural (non-substantive) issues, such as

  • identification of goods and services requiring clarification, rewording, or narrowing

  • a disclaimer requirement for descriptive wording within the mark

  • specimen problems in use-based applications (for example, the specimen does not show the mark as used in commerce, appears digitally altered, or does not match the drawing)

  • drawing issues (for example, inconsistencies between the mark in the drawing and the mark shown on the specimen)

  • entity or owner information problems (such as the applicant name needing correction or confirmation)

  • missing or improper signatures or verification statements

  • classification issues, including reclassifying goods or services into the correct international class or paying additional class fees

  • requests to clarify the filing basis, dates of use, or foreign priority details in Section 44 or Section 66(a) filings

  • translation, transliteration, or meaning statements for non-English wording in the mark

    
    

• Substantive issues, which raise legal grounds for refusal, most commonly

  • likelihood of confusion with a prior-filed or registered mark under Section 2(d)

  • descriptiveness, surname, or genericness refusals under Section 2(e)

  • ornamental use refusals for certain goods, especially apparel, where the mark is viewed as decorative rather than a source identifier

  • failure-to-function refusals, where the wording or design is considered informational or a common phrase rather than a trademark

  • deceptiveness or misdescriptiveness refusals, depending on how the mark relates to the goods or services

In most cases, you have three months to respond, with the option to request one three-month extension for an additional USPTO fee. (37 C.F.R. § 2.62)

How Common Are Refusals and What is a Final Office Action?

Office Actions are a routine feature of examination, and many applications receive at least one. Procedural issues are typically addressed through amendments or clarifications. Substantive refusals require a legal response supported by argument and evidence.

A key point in the process is understanding what a final Office Action means. A final Office Action is issued when the examining attorney concludes that the applicant’s prior response did not overcome all outstanding refusals or requirements. “Final” does not mean the application is automatically over, but it does narrow the available paths forward. After a final Office Action, an applicant generally must either

• comply fully with any remaining requirements, if compliance is still possible

• file a Request for Reconsideration with new arguments or evidence

• appeal the refusal to the Trademark Trial and Appeal Board (TTAB)

• in some situations, consider a new application if that is the most practical option

In short, a refusal signals that the USPTO needs changes or legal justification before it will allow the application to proceed.

What Are the Risks and Costs?

Office Action responses often involve work beyond the initial filing, and the scope of that work depends on what the USPTO raised.

• For procedural Office Actions, the response may be limited to preparing amendments, supplying corrected information, or addressing straightforward specimen or classification issues. In some cases, the examining attorney may work with counsel to resolve minor matters through an examiner’s amendment. An examiner’s amendment is a change entered by the USPTO, with the applicant’s authorization, to correct or clarify issues without requiring a full written response. This can help expedite approval by quickly resolving narrow items.

• For substantive refusals, responding typically requires legal analysis and supporting evidence. That may include researching cited registrations, preparing arguments distinguishing the marks or goods and services, submitting declarations, or providing marketplace materials. Because these refusals can be fact-intensive and require a tailored strategy, they generally involve additional attorney time and expense.

How to Reduce the Risk of Refusal

Many Office Actions can be avoided by conducting a comprehensive search and clearance review before filing. A trademark attorney can help identify potential conflicts, select the appropriate filing basis, and craft goods and services descriptions to reduce avoidable objections.

If an Office Action does issue, the examining attorney may sometimes work with counsel to resolve narrow issues efficiently, including by entering an examiner’s amendment where appropriate. The important point is that Office Actions are common, and the process provides structured opportunities to address the USPTO’s concerns.

Helpful USPTO resources:

• https://www.uspto.gov/trademarks/maintain/responding-office-actions

• https://www.uspto.gov/patents/maintain/responding-office-actions

• https://www.uspto.gov/trademarks/apply/definitions-responding-uspto-office-action

• https://www.uspto.gov/dashboard/trademarks/