Trademark Office Actions

Applying for a trademark with the United States Patent and Trademark Office (USPTO) isn’t always a smooth process. In many cases, applicants receive a Trademark Office Action, which is an official letter from the USPTO outlining issues with the application. These issues can range from minor administrative errors to serious legal conflicts that could prevent registration.

At Kinhal Law PLLC, we help businesses navigate Trademark Office Actions, ensuring they respond effectively to protect their brand. Whether your application faces a simple procedural correction or a complex legal refusal, understanding Office Actions and how to handle them is key to securing your trademark registration.

What Is a Trademark Office Action?

A Trademark Office Action is an official notice issued by a USPTO examining attorney during the trademark application review process. It outlines specific problems with the application and may require:

Corrections to technical details (such as improper descriptions or classifications).

Legal arguments to overcome refusals based on currently registered trademarks or distinctiveness issues.

Additional documentation proving that the mark is being used in commerce.

Applicants typically have three months to respond, with an optional three-month extension available for a fee. Failure to respond in time results in abandonment of the trademark application.

Types of Trademark Office Actions

Office Actions generally fall into two main categories:

1. Non-Substantive (Procedural) Office Actions

These Office Actions involve minor errors or omissions that can usually be corrected easily. Common non-substantive issues include:

Incorrect Trademark Description – If the way you’ve described your trademark is unclear or too broad, the USPTO may request a revised description.

Improper Specimen – If you submitted a specimen (evidence of trademark use) that doesn’t meet USPTO requirements, you may need to provide a new one.

Classification Issues – If your goods or services are categorized incorrectly, you may need to update your application.

Missing or Incomplete Information – The USPTO may ask for additional details, such as a disclaimer for generic terms in your mark.

Since these issues are primarily administrative, they can often be resolved quickly without legal arguments.

2. Substantive Office Actions (Legal Refusals)

Substantive Office Actions involve legal grounds for refusal, requiring detailed responses and legal arguments to overcome them. These are more challenging and often require assistance from an experienced trademark attorney.

Common substantive refusals include:

Likelihood of Confusion (Section 2(d) Refusal)

If the USPTO believes your trademark is too similar to an existing registered mark, they may refuse it under Section 2(d) of the Lanham Act. Factors considered include:

Similarity in appearance, sound, meaning, or commercial impression.

Similarity of the goods or services.

The strength of the existing mark.

To overcome this refusal, responses often involve:

Legal arguments showing key differences between the marks.

Evidence of coexistence (if similar marks have been allowed in the same industry).

A consent agreement from the owner of the cited trademark.

Descriptiveness Refusal (Section 2(e)(1) Refusal)

If your mark is merely descriptive of your goods or services, the USPTO may refuse it under Section 2(e)(1). For example, attempting to register “Fresh Bread” for a bakery would likely result in a descriptiveness refusal.

Ways to respond include:

Arguing that the mark is suggestive rather than descriptive.

Claiming acquired distinctiveness (if the mark has been used extensively and consumers associate it with your brand).

Amending the application to the Supplemental Register, which offers some trademark protection for descriptive marks.

Genericness Refusal

If a mark is too generic, meaning it refers to a general category of goods or services, it cannot be registered. For example, “Laptop” for computers would be rejected. Generic marks have no trademark protection, and overcoming this refusal requires providing evidence that the mark is distinctive and consumers associate the goods or services with the mark.

Failure to Function as a Trademark

A trademark must serve as a source identifier for goods or services. If the USPTO believes your mark doesn’t function as a trademark, it may refuse registration. This often happens when:

The mark is a common phrase or slogan used by many people (e.g., “Best Coffee in Town”).

The mark is decorative rather than identifying a brand (e.g., a logo used as artwork on clothing rather than as a brand identifier).

Ways to overcome this refusal include:

Providing evidence of consumer recognition.

Modifying the application to specify how the mark functions as a brand identifier.

Scandalous or Deceptive Marks (Section 2(a) Refusal)

If a trademark is considered scandalous, immoral, deceptive, or falsely suggests a connection with a person or institution, it may be refused under Section 2(a). While the Supreme Court has struck down certain bans on “scandalous” marks, deceptive trademarks remain ineligible.

For example, attempting to register “Organic Healing Tea” for a product that isn’t organic could be refused as deceptive. Overcoming this refusal often requires modifying the trademark or proving that it is not misleading.

Responding to a Trademark Office Action

At Kinhal Law PLLC, we guide clients through the Office Action response process, ensuring the best possible chance of overcoming refusals. Here’s how the process works:

1. Reviewing the Office Action Carefully

Understanding the USPTO’s reasoning is the first step. Some Office Actions require minor corrections, while others demand strong legal arguments.

2. Determining the Best Response Strategy

Each Office Action requires a tailored response. Strategies may include:

Revising the application to fix minor errors.

Providing legal arguments to challenge substantive refusals.

Submitting additional evidence (such as proof of distinctiveness or consumer recognition).

Negotiating with the USPTO (such as requesting a reconsideration of a refusal).

3. Submitting the Response on Time

Office Action responses must be filed within three months of the USPTO notice. If additional time is needed, a three-month extension can be requested for a fee. Missing the deadline results in application abandonment.

4. Waiting for USPTO Review

After submitting a response, the USPTO will review the case and issue either:

An approval, allowing the application to move forward.

A final refusal, meaning the applicant must either appeal the decision or abandon the trademark.

Why Addressing an Office Action Matters

Ignoring a Trademark Office Action can result in application abandonment, meaning your brand loses its chance for federal protection. Responding correctly helps:

Secure trademark rights for your business.

Avoid costly rebranding if your application is denied.

Protect against infringement by establishing legal ownership of your brand.

How Kinhal Law PLLC Can Help

At Kinhal Law PLLC, we help businesses navigate Office Actions efficiently and strategically. Our services include:

Analyzing the refusal and developing a response strategy.

Drafting and filing strong legal arguments.

Providing evidence to support registration.

Negotiating with the USPTO to resolve refusals.

If you’ve received a Trademark Office Action, don’t wait until the deadline approaches. Contact Kinhal Law PLLC today to discuss your next steps. Visit www.kinhallaw.com for more information.