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Trademark Office Actions

The USPTO raised an issue with your application. An experienced trademark attorney can evaluate the refusal, identify available response strategies, and prepare legal arguments and evidence where appropriate.

Review My Office Action

Deadlines matter

The USPTO gives you three months from the date of the office action to respond. You can extend this to six months total for a fee. Missing the deadline results in abandonment of your application.

Office Actions are a common part of the USPTO examination process. The key is responding promptly and with a well-prepared legal argument.

Common reasons for office actions

Likelihood of confusion with an existing mark
Merely descriptive or generic refusal
Specimen does not show use in commerce
Identification of goods/services requires clarification
Surname refusal
Primarily geographically descriptive
Failure to function as a trademark
Section 2(d) likelihood of confusion

Types of office actions

Non-final office action

The first substantive communication from the examining attorney raising legal objections or requesting clarification. A response gives the examining attorney an opportunity to reconsider the refusal.

Final office action

Issued after the examining attorney reviews your response to a non-final office action and maintains the refusal. Options are more limited and typically include filing a Request for Reconsideration or appealing to the TTAB.

Frequently asked questions

Are office actions included in the flat-fee registration package?

No. Office action responses are priced separately based on the complexity of the refusal. If you receive an office action, contact us and we will review it with you and explain your options.

How long do I have to respond?

The USPTO gives you three months from the date of the office action to respond. You can extend this to six months total for a fee. Missing the deadline causes your application to go abandoned.

Can every office action be overcome?

Not always. Some refusals reflect genuine legal obstacles — for example, a likelihood of confusion with a very similar registered mark in the same class. A thorough clearance search before filing is the best way to reduce the risk of receiving office actions.

What does an office action response involve?

Depending on the type of refusal, a response might include legal arguments, submission of evidence of acquired distinctiveness, amendment of the identification of goods/services, or a combination of approaches.

Got an office action?

Give us a call and we will review it with you and explain your options.

Submitting this form does not create an attorney-client relationship. Please do not send confidential or sensitive information until Vallo Law has confirmed representation. Or email us at hello@vallolaw.com.