What is an Office Action?

After submitting an application for federal registration of a Trademark, the United States Patent and Trademark Office (USPTO) assigns a trademark attorney to act as the examiner for this application. The examiner is responsible for reviewing the trademark application and determining whether the application complies with the statutes (15 U.S.C., also known as the Lanham Act), the trademark regulations, or trademark office policies (set forth in the TEMP) that govern the federal registration of trademarks. If everything is acceptable, the examiner will allow or register the trademark. If, however, the examiner notices a problem, then the examiner will send an "office action" to the applicant or their attorney pointing out the issue. An office action may identify minor issues such as typographical errors or improperly formatted documents. These minor errors are usually described as "objections" to the application within the office action. In other cases, the examiner will identify more substantive errors relating to an incompatibility between the applied for registration and the requirements of the Lanham Act or the trademark regulations.

The applicant or their attorney must file a response to an office action with the time-limit specified in the office action, usually six months from the office action's mailing date. All issues that the trademark examiner raises in the Office Action must be addressed in a timely-filed response, or the examiner may decide to allow the application to go abandoned.

Common Types of Rejections in an Office Action

The most common substantive rejections presented in a trademark office action are those that refer to the proposed mark being “confusingly similar” to another existing or applied for trademark. For more information on responding to these rejections, see our Guidance on Dealing with a confusingly similar rejection in a trademark application.

Another important substantive rejection found in many office actions is a descriptiveness rejection. Descriptive marks cannot be registered on the Principal Register unless they have acquired secondary meaning, as explained in Bitlaw's legal description of descriptive marks. We have also developed specific guidance on "how to respond to a descriptiveness rejection," which will be useful if you encounter a descriptiveness rejection.

Some trademark applications assert the actual use of a trademark in interstate commerce (see our guidance on What is an Intent to Use Application? and What is an Actual Use Trademark Application? for more information on the different types of trademark applications). These applications must include specimens that prove that the mark has been used. In these types of applications, it is fairly common for the examiner to claim that the specimen that the applicant has submitted to show “actual use of the mark in commerce” is improper.

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