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A new deadline for responding to office actions during the examination of a trademark application shortens from six months to three months starting December 3, 2022. Read the rule in the Federal Register.
The United States Patent and Trademark Office (USPTO) may issue several different types of office actions about your trademark application. This page focuses on office actions that trademark examining attorneys send during the application process.
An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before we can register your trademark.
In an office action, an examining attorney may require that you fix legal problems with the application itself (“requirements”) by making simple revisions, such as clarifying your goods or services. An examining attorney may also raise legal rejections (“refusals”), such as refusing your application because your chosen trademark is likely to be confused with an already registered trademark. However, you may not always be able to fix a requirement or a refusal. See the section on this page called ”Responding to common refusals or requirements.”
Some office actions require a written response to fix major legal problems, others suggest calling or emailing the examining attorney to fix minor legal problems, and others may require no response at all (see “What are other common types of office actions”). Read your office action carefully to determine how and whether you need to respond.
A nonfinal office action raises a legal problem about your application for the first time. You must respond to this letter within six months from the date it issues. If your response satisfies each legal problem in the nonfinal office action and doesn’t raise any new problems, your application will proceed toward registration. If your response doesn’t satisfy each problem and doesn’t raise any new problems, you will be sent a final office action. If your response raises a new problem, the examining attorney will send you a new nonfinal office action to address the new problem and indicate any outstanding refusals and/or requirements previously raised.
A final office action raises a legal problem about your application for the last time. You’ll receive a final office action only after the examining attorney has raised all legal problems with you at least once already. When you receive a final office action, it’s your last opportunity to file a response during the application process. If your response satisfies each legal problem in the final office action, your application will proceed toward registration. If it doesn’t, the application will be abandoned unless you timely file an appeal with the Trademark Trial and Appeal Board (TTAB). Applicants often file both an appeal to the TTAB and a direct response to the final office action.
Besides nonfinal and final office actions, an examining attorney can issue other types of office actions. Some require a response and others don’t. Before responding, check the title of the office action to see which type you received and whether a response is required. The common types of office actions are described below.
An examiner’s amendment confirms in writing a change to your application authorized by phone or email. Changes to your application can be authorized by you, your attorney, or another person who can sign contracts for you and who has authority to legally bind you. Generally, examiner’s amendments do not require responses. They are typically issued for minor legal problems with your application that can be resolved by phone or email. Examiner’s amendments are used to move your application toward registration faster.
A priority action confirms in writing a discussion you had with the examining attorney by phone or email about the legal problems with your application. A priority action includes explanations about legal problems with your application and, if possible, how to fix them. A priority action can be a nonfinal or final action. You must respond to a priority action within six months from the date it issues. Priority actions are typically issued when an examining attorney believes the legal problems can be resolved in writing by the applicant once the problems are discussed by phone or email. Priority actions are used to move your application toward registration faster.
A suspension letter, or letter of suspension, issues when your application is put on hold while the examining attorney waits for something to happen outside the examination process. For example, your application could be suspended while we wait for an assignment of ownership to be processed or a foreign registration to issue from another country. You may file a response to a suspension letter, but you are not required to.
We review suspended applications every six months to determine whether suspension is still appropriate. However, you can notify the examining attorney at any time if you think suspension is no longer necessary. For example, if we suspended your application because of a conflicting trademark in an earlier-filed application and you check the Trademark Status and Document Retrieval (TSDR) system and find that the other application was “abandoned,” you can call or email the examining attorney and request your application be removed from suspension.
A suspension inquiry requires you to provide information about why your application was initially suspended so we can determine if it should remain suspended. Typically, the examining attorney will issue a suspension inquiry only after your application has been suspended for six months or more. Suspension inquiries are also issued when information relevant to the suspension is not available to us in the USPTO databases. You must respond to this inquiry within six months of when it issues.
Notice of incomplete response
A notice of incomplete response generally issues when we receive a response to an office action that does not appear to be signed by someone with legal authority to sign it. You must submit a properly signed response either within 30 days from the date the notice issues, or within the time remaining in the six-month response period—the notice will specify the deadline. If you file a response after the deadline, the application will be abandoned.
Generally, we must receive your response to an office action within six months from the date it issued for the response to be considered “timely.” Some types of office actions have a shorter deadline. Read your office action carefully to determine the specific deadline for the response.
To avoid missing the deadline, do not wait until the end of the deadline to respond. Maintenance of the Trademark Electronic Application System (TEAS) or unforeseen circumstances could affect your ability to timely respond.
If you do file a response after the deadline, the application will be abandoned. Your application fees will not be refunded and your trademark will not register.
Deadlines for responding to office actions are set by law and the USPTO generally can’t grant you an extension of time to respond.
In certain office actions, such as a priority action or an examiner’s amendment, an examining attorney may suggest that you call or email him or her to resolve minor legal problems with your application, such as clarifying your goods or services. This process is often used to move your trademark toward registration faster. However, any email correspondence between you and the USPTO will be uploaded into your application record and become public on the USPTO website.
Respond online using the Trademark Electronic Application System (TEAS).
You must use the correct TEAS form to respond. And your response must be signed by a proper person or we can’t accept it. See the section below called “Who can sign the TEAS response form.”
To respond to a nonfinal office action, use the TEAS Response to Office Action form.
To respond to a final office action, use the TEAS Request for Reconsideration after Final Action form.
NOTE: If you need to respond to an office action, and you cannot resolve all outstanding issues by phone or email, you must file your response to the office action through TEAS.
Watch our video on responding to nonfinal office actions. In the video, you will learn how to use TEAS to respond to a nonfinal office action.
It’s very important that the correct person sign the response form or request for reconsideration forms. If the wrong person signs it (someone not authorized to sign for you), the USPTO will issue you a notice of incomplete response, which gives you a deadline to submit a properly signed response.
Follow these guidelines for signatures on TEAS response forms:
If you don’t have an attorney, and you are a/an:
Signers with titles such as “trademark administrator,” “business manager,” “owner’s designated agent,” or similar titles are presumed to be unauthorized.
If you have an attorney, the attorney must sign the response. Only attorneys licensed to practice in the United States and in good standing with a bar of the highest court of a U.S. state or territory can represent you in a trademark matter at the USPTO and sign responses. Canadian trademark attorneys and agents who are reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) can also sign responses, but the USPTO will only correspond with a U.S.-licensed attorney. Be advised that employing someone to represent you who is not authorized to practice before the USPTO in connection with your trademark application could put your application and any resulting registration at risk.
Whoever is signing the submission must physically sign the printed document that will be electronically attached to the TEAS form or enter his or her signature electronically. Another person cannot sign for the attorney or other authorized signer. Signatures “by the corporation” or “by the firm” are not permitted.
Any submission not properly signed by an authorized person could delay or prolong the application process, lead to the abandonment of your application, and jeopardize the legal validity of any resulting registration.
If the USPTO determines that a submission was not signed by the proper person, the submission will not be accepted and any arguments, evidence, or amendments in the submission will not be considered or entered in the record.
See 37 C.F.R. §2.193(e)(2) and TMEP §712.01 for more information about who can sign responses.
The TEAS response form can be signed using an electronic typed signature method or a traditional handwritten signature in an attachment to the form. Follow the instructions in the TEAS form.
See TMEP §611.01(c) for more information about signing TEAS forms.
Your response must be “complete”—it must respond to each legal problem raised in the office action. Read the rest of this section for tips on how to file a complete response. You can also follow the tips for responding to common refusals or requirements in the last section of this page.
If you need more information on how to understand and address a specific legal problem raised in an office action, see our online manuals and videos. For example, the Trademark Manual of Examining Procedure (TMEP) can help you understand a particular issue, such as how clear and detailed an identification of goods or services needs to be, or what acceptable specimens for services are.
You may want to number each problem to keep track of all the problems that you must respond to. Don’t be put off by legal references in the office action, such as those to the Trademark Act (15 U.S.C. §1051). The text before and after these references should explain the problem so that you can respond to it.
An examining attorney typically includes and discusses evidence that supports a refusal and/or requirement in an office action. For example, an examining attorney may attach evidence of third-party registrations to show that certain goods are related because they are provided by the same business owner. Or third-party registrations may be used to show that particular wording is always disclaimed in registered trademarks for certain goods because the wording is merely descriptive of those goods.
You may respond to each refusal or requirement by arguing against the examining attorney’s evidence and/or analysis. For example, you could provide evidence that the goods at issue are not related based on how they are used in a particular industry or field, or why certain terminology is not descriptive of the goods.
You may also provide your own evidence to support your interpretation or analysis of each problem. For example, you can explain the field or marketplace in which you use your goods. Or you can submit brochures, printouts of webpages, catalogs, documentation, and any other evidence to show how your industry or field works.
If you decide to argue against a refusal or requirement, you should make specific, fact-based points about why the examining attorney should withdraw the refusal or requirement. Include any evidence that supports your argument. Avoid conclusory or broad arguments that are not supported by evidence.
If you decide to agree with a refusal or requirement, you may adopt, if provided, the language or resolution the examining attorney suggests. A suggestion will not be provided if the refusal or requirement can’t be fixed.
USPTO staff may be able to answer your questions about your office action. However, they can’t give you legal advice on how to respond to it. To make sure you speak with the right person, read the following descriptions of USPTO staff and the questions they can answer.
The examining attorney is the person most familiar with your application and can answer specific questions about your office action. The examining attorney’s name and contact information are found at the end of your office action. Before you contact the examining attorney, read the office action carefully. If you can’t reach the examining attorney immediately, wait at least two business days for him or her to respond. If the attorney is out of the office, contact his or her supervisor. To find supervisor contact information, go to the trademark contact information webpage and find the senior attorney for your examining attorney’s particular law office. The law office number is listed in the examining attorney’s signature block at the end of the office action.
The examining attorney’s supervisor can answer questions when you have an immediate deadline and can’t reach the examining attorney. However, the supervisor will not be familiar with your application, may need time to review it, and may not be able to take certain actions or make decisions on it.
TAC staff can answer general questions about the trademark application process, how to navigate the USPTO website and online systems, and technical issues related to using TEAS response forms, such as how to attach evidence or specimens. Learn more about the Trademark Assistance Center.
This requirement is made when an examining attorney determines that some or all of the goods or services in your application are unclear, indefinite, and/or too broad. You will need to replace the unacceptable description of goods or services with wording that is more specific, clear, accurate, and concise, or otherwise “definite.” Your identification should use terms that an average person will generally understand and should avoid jargon.
Why we need a definite identification of goods or services
You can change your identification only to clarify or limit your goods or services
After you submit your application, you can’t expand or broaden your goods or services to include ones that are not in your identification. Below are examples of changes that can and can’t be made to specific identifications.
You can’t “undo” any subsequent changes you make to your identification
Once you change or delete goods or services from your identification and the examining attorney accepts those changes or deletions, you can’t change a subsequent identification back to the original one. You may only limit or narrow the scope of your identification or delete goods or services from it; you may not broaden your identification at any time to add goods or services. If you need to broaden the goods or services, you would need to submit a new application for them.
Tips for responding to this requirement
This requirement is made when an examining attorney determines that a specific term or design in your trademark is not registrable. You will be asked to provide a disclaimer—a statement that you do not claim exclusive rights to the specific term or design. Disclaiming part of your trademark does not change the appearance of your trademark.
A disclaimer is required because other people or businesses also need to use the specific term or design to describe their goods, services, or business without the threat of a lawsuit for infringing a registered trademark. For example, an examining attorney would require a disclaimer for CAFÉ in the trademark BOB’S CAFÉ for restaurant services, because the term CAFÉ describes a type of restaurant services and other cafés would need to use this word to describe their cafés without the threat of a lawsuit.
See our webpage on how to satisfy a disclaimer requirement.
A specimen refusal is made when an examining attorney determines that you did not provide a specimen, or that problems exist with the specimen you provided. A specimen is a real-life sample of how you are actually using your trademark with the goods or services identified in your application in the marketplace—for example, how your trademark is used on your product packaging or website.
An acceptable specimen:
See examples of acceptable specimens for goods and acceptable specimens for services.
Common problems with specimens
Specimen refusals can’t always be fixed
You might not be able to overcome a specimen refusal. For example, if the goods or services in your application do not actually match the goods or services you use in the marketplace, then you will not be able to provide a substitute specimen to show actual use of your listed goods or services. An example would be a specimen that shows a label on a beer bottle for a trademark application for wine. A label on a beer bottle would not be acceptable, but a label on a wine bottle would be acceptable.
You will not likely be able to change your identification to match the goods or services that you use in the marketplace. Such a change would not be permitted by the examining attorney if the changes expanded or broadened the goods or services in your application.
A Section 2(d) “likelihood of confusion” refusal is made when an examining attorney completes a search of the USPTO database of registered trademarks and determines that your trademark is similar to one or more registered trademarks used with goods or services that are related to your goods or services. Under these circumstances, a consumer is likely to be confused about the source of your goods or services. Consumers could believe that your goods or services come from the registration owner, or vice versa.
A Section 2(e)(1) refusal is made when an examining attorney finds evidence showing that all the text or design in your trademark merely describes some aspect of your goods or services. For example, an examining attorney would issue a refusal for “creamy” for yogurt, or “crusty and chewy” for bagels. We issue this refusal, generally, because businesses and competitors need to be free to use descriptive language when characterizing their own goods or services to the public without the threat of a lawsuit for infringing a registered trademark.
This refusal is made when an examining attorney determines that your trademark is a “widely used message.” We refuse registration of these phrases because they’re commonly used phrases that don’t indicate the source of goods or services. Instead, they simply convey ordinary or familiar concepts or sentiments.
For example, an examining attorney would issue a refusal of “Think green” for home insulation products because this commonly used phrase merely conveys a message of environmental awareness. A consumer who sees the phrase on insulation wouldn’t think it’s from any particular manufacturer. An examining attorney would also refuse registration of “Drive safely” for automobiles because the phrase is just a commonplace safety warning, so a consumer wouldn’t recognize it as a source identifier. In addition, an examining attorney would refuse registration of “Once a Marine, always a Marine” because the phrase is a common motto of the U.S. Marines. If a consumer saw the motto on goods, like tee shirts or mugs, they wouldn’t think that “Once a Marine, always a Marine” points to a specific source for the goods.
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