Trademark Office Actions Explained
It’s not unusual for the U.S. Patent and Trademark Office (USPTO) to issue trademark Office Actions against trademark applications pending registration. An Office Action is a formal communication from the USPTO requesting more information about the trademark, or stating the Examining Attorney’s findings about potential obstacles to registration.
Some trademark Office Actions are quite standard and easily remedied, while others are more substantive and may require legal arguments and evidence to support your position and justify why your mark should be entitled to registration.
We consider some of the most common reasons why the USPTO may issue an Office Action and what you can do to avoid one.
Likelihood of Confusion
Likelihood of Confusion is perhaps the most common substantive basis on which the USPTO may refuse registration 
of a proposed trademark is likelihood of confusion with another mark. If the Examining Attorney finds that a trademark, when used on or in connection with the goods or services identified in the application, so resembles a registered trademark that it is likely to cause confusion among consumers, the mark may not be registered.
In determining likelihood of confusion, the USPTO considers similarities between the marks and the relatedness of the goods or services in the applications. The USPTO considers phonetic equivalents, similarities in appearance, sound and commercial impression, and the nature of the goods or services covered by the relevant applications.
Conducting a comprehensive trademark search before applying for trademark registration may reduce your chances of getting an Office Action based on likelihood of confusion.
Trademark Disclaimers
Disclaimers and Descriptive Marks: Generic or descriptive words are not entitled to trademark protection. Trademark law requires trademark applicants to disclaim any portion of their mark that is generic, merely descriptive or deceptively misdescriptive (e.g., the mark BEBO’S SHOES would require a disclaimer of the word “shoes”).
If the mark contains descriptive word(s) and there is no disclaimer, the Examining Attorney may issue an Office Action requiring a disclaimer of the descriptive or generic portions of the mark.
The applicant is still entitled to use the generic or descriptive wording as part of their trademark, and the mark will be protected in its entirety, but the applicant will not have exclusive rights to prevent others from using or adopting marks that also contain the generic or descriptive material.
For Office Actions based on descriptiveness, the applicant may submit arguments and evidence showing that the mark does not merely describe the goods or services, or that the mark, over years of continued use and/or marketing, has acquired distinctiveness to serve as a trademark.
Statement of Use
Improper Specimen – For trademark applications covering “in use” marks, the USPTO requires a “specimen” showing the mark as it is used in connection with the goods or services specified in the application. The specimen may be hangtags or labels for clothing, product packaging for food or personal care items, or a website screenshot for online services.
If the trademark application does not include a specimen, or if the specimen does not exactly reflect the mark as shown in the application, the USPTO will issue an Office Action requesting a new specimen. As a part of our comprehensive trademark service, our trademark attorneys will advise you on selecting a proper specimen to avoid any delays in your trademark registration process.
These are just a few of the possible reasons why applicants may receive Office Actions. They are not insurmountable and may be overcome with persuasive arguments and/or evidence addressing the issues cited in the Office Action.
If you’ve received a trademark Office Action for your trademark application, please contact us for a complimentary consultation, (800) 769-7790. We’re always happy to hear from you.
More About This Article
