Responding to office actions

A nonfinal office action raises a legal problem about your application for the first time. You must respond to this letter within three months from the date it issues. An optional three-month extension can be requested for a fee. For Madrid applications under Section 66(a), the deadline for responding to an office action is six months (and no extension option) because of the additional processing time these applications take. 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. You must respond to this letter within three months from the date it issues. An optional three-month extension can be requested for a fee. For Madrid applications under Section 66(a), the deadline for responding to an office action is six months. 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, whether a response is required, and the response deadline. The common types of office actions are described below.  

Examiner's amendment

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.

Priority action

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 three months from the date it issues, unless you file a request to extend the deadline. Madrid applicants must respond within six months from the issue date and have no option to extend this deadline. 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. 

Suspension letter

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.

Suspension inquiry

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 three months of when it issues, unless you file a request to extend this deadline. Madrid applicants must respond within six months from the issue date and have no option to extend the deadline. 

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 response period—the notice will specify the deadline. If you file a response after the deadline, the application will be abandoned.

In certain office actions, such as a priority action or an examiner's amendment, an examining attorney may suggest that you call or email them 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:

• Individual applicant, you must sign the response.
• Partnership applicant, a general partner must sign the response.
• Corporation applicant, a corporate officer must sign the response (corporate officers can include president, vice-president, treasurer, or secretary).
• Limited Liability Company (LLC) applicant, a member, manager, principal, owner, or someone with a corporate title may sign the response.
• Limited Liability Partnership (LLP) applicant, a partner may sign the response.
• Joint applicants, all joint applicants must sign the response. 

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.

Personally sign submissions

Whoever is signing the submission must physically sign the printed document that will be electronically attached to the TEAS form or enter their signature electronically. Another person cannot sign for the attorney or other authorized signer. Signatures “by the corporation” or “by the firm” are not permitted.

What happens when responses are improperly signed

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. Section 2.193(e)(2) and TMEP Section 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 Section 611.01(c) for more information about signing TEAS forms.

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.

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 them to respond. If the attorney is out of the office, contact their 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.

What is this requirement?  

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

• To help the public understand the industry where you’re using your goods or services so people can better understand if a conflict exists with other trademarks in that industry; 
• To classify your goods or services properly;
• To conduct a search of the USPTO database of registered trademarks and to make informed decisions on whether your trademark, as it’s currently used or as it will be used with your goods or services, is likely to cause confusion with a similar registered trademark for related goods or services (see the section below called “Section 2(d) ‘likelihood of confusion’ refusal”); and
• To calculate your filing fee and other related application fees, which are based on the number of international classes of goods or services in your application. An indefinite identification could be interpreted as including goods or services in other international classes and could require additional fees.

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.

 Examples

• "Computer programs" is indefinite and can’t be changed to computers or other computer hardware, but it can be changed to clarify the purpose and function of the programs (“computer game programs”).
• "Ophthalmology services" is definite and can’t be changed to "medical services" (as it would include all medical services), but it can be changed to clarify the type of service (“laser vision surgery services”).
• "Food" is indefinite and can’t be changed to "beverages," but it can be changed to clarify the type or category of food ("fresh fruit" or "dog food").
• “Menus” is indefinite and can’t be changed to "restaurant services," but it can be changed to clarify the goods (“printed menu inserts”).

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

• Review the examining attorney’s suggested revisions for amending the identification of goods or services in the office action. If you agree with the suggested changes, you must still respond to the office action to approve those changes. If you do not agree with the suggested changes, review why they were requested, then search the USPTO ID Manual for a more accurate and acceptable description using synonyms for your goods or services.
• Explain your goods or services and general industry, when necessary, so that the examining attorney can understand the type of goods or services you are applying for. Such as explaining a particular industry for the services of designing energy systems or consulting on the vibrational effects on equipment.
• Use plain, nontechnical language to describe your goods or services and avoid industry jargon.
• Do not include your trademark or another party’s registered trademark in your identification. When responding, use generic or everyday wording to identify your goods or services. For example, WI-FI, realtor, and onesies are registered terms and cannot be used to identify goods or services in an application.

What is 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.

Tips for responding to this requirement

See our webpage on how to satisfy a disclaimer requirement.

What is this refusal?

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:

• Shows your trademark used with the goods or services listed in your application;
• Depicts your trademark as shown on the drawing;
• Shows your trademark in actual use in commerce (not a “mock up” or printer’s proof of how it might be used in the future, or a digitally altered image that is not actually in use);
• Is an appropriate type of specimen based on whether you have goods, services, or both. For example, advertising material is an acceptable specimen for services, but not for goods; and
• Shows that your trademark is used in a way that consumers would perceive it as a source indicator for your goods or services (it functions as a trademark).

See examples of acceptable specimens for goods and acceptable specimens for services.

Common problems with specimens

• The trademark does not appear on the specimen.
• The trademark on the specimen looks different from the trademark on the drawing.
• The specimen is not associated with the goods or services in the application.
• The specimen is a “mock up,” printer’s proof, or other digitally altered image that is not actually used in the marketplace.
• The specimen is not the appropriate type for the goods or services, such as advertising for goods (advertising is not an acceptable specimen type for goods, only services).
• The specimen does not show the trademark used in a way that consumers would perceive identifies the commercial source of the goods or services (and so it fails to function as a trademark). Here are some examples of proposed trademarks that fail to function as trademarks:
  • Trademarks that convey only a widely used commonplace expression (such as “Have a nice day”);
  • Trademarks that are perceived as mere ornamentation or adornment (such as a large elephant logo on the front of a t-shirt);
  • Trademarks that show the title of a single book or CD and not that of a series; or
  • Trademarks that are used as the name of a process or system used to make the goods or when providing the services.

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.

Tips for responding to this refusal

• Explain why you think your specimen is acceptable. You may argue against the examining attorney’s evidence and/or analysis by making specific, fact-based points for why the refusal should be withdrawn.
• Submit a different specimen if requested. You will often be asked to provide a different or “substitute” specimen that meets the legal requirements for a proper specimen. You can provide one substitute specimen, or more (to increase the chance one will be acceptable), and explain what the specimen shows and how it is used with your goods or services. However, any substitute specimens must have been in use in commerce as of a certain date, which you will have to attest to in a signed declaration. See our webpage on submitting a substitute specimen.

What is this refusal? 

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.

Tips for responding to this refusal

• Explain how your trademark differs from the registered trademarks. You may argue against the examining attorney’s evidence and/or analysis regarding the similarity of your trademark and the registered trademarks. Make specific, fact-based points about why your trademark is not similar to the registered trademark in appearance, meaning, sound, or overall commercial impression.
• Explain how your goods or services differ from those in the registered trademarks. You may argue against the examining attorney’s evidence and/or analysis about the relatedness of your goods or services and those in the registered trademarks. Make specific, fact-based points about why your goods or services are different, unrelated, or travel in different trade channels from those in the listed registrations. Explain your goods or services and your general industry, when necessary, so that the examining attorney can understand the type of goods or services you are applying for.
• Amend your goods or services to narrow the field of use, if appropriate. In some cases, narrowing or limiting your goods or services to specify a particular field of use may overcome a conflict with a registered trademark. However, you should discuss this option with the examining attorney before you amend your identification because generally the identification can’t later be changed back to the original one.
• Get a consent agreement from the owners of the registered trademarks, if appropriate. You may be able to negotiate with the registration owners for an agreement in which the owner gives written consent to your use and registration of your trademark and includes reasons why the parties believe no likelihood of confusion exists. For this option, an examining attorney can’t give you extra time in the response period to get consent. Although consents are given serious consideration, they do not always overcome this refusal. You may want to consult a private trademark attorney for assistance with consent agreements.
• Check the status of the registered trademarks. If they are “dead” they can longer bar your trademark from registration and you should let the examining attorney know. Check status using the TSDR system.

What is this refusal? 

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.

Tips for responding to this refusal

• Explain why you think your trademark is not descriptive. You may argue against the examining attorney’s evidence and/or analysis regarding your trademark being descriptive. Make specific, fact-based points about why you believe the wording and/or design in your trademark does not describe your goods or services and submit any relevant evidence, such as brochures and webpages. Explain your goods or services and general industry, when necessary, to support your position that the trademark does not describe your goods or services.
• Amend your application to add a Section 2(f) claim or to the Supplemental Register, if you agree your trademark is descriptive. Typically, an examining attorney will provide either option in the office action when appropriate. Amending to the Supplemental Register is the easiest option as it does not require evidence, but the Supplemental Register does not provide the same advantages as the Principal Register (and it is not available for a Section 66(a) application). Amending your application to include a Section 2(f) claim to indicate your trademark has acquired distinctiveness typically requires evidence. However, this option is not available when your trademark is both descriptive and generic for your goods or services, such as the term “bicycle” for bicycles or retail bicycle stores, or “foot-long” for foot-long sandwiches.
• Amend your goods or services to narrow the field of use, if appropriate. In some cases, limiting your goods or services to specify a particular field of use may overcome the refusal. However, you should discuss this option with the examining attorney before you amend your identification because generally the identification can’t later be changed back to the original one.

What is this refusal? 

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.  

Tips for responding to this refusal 

• Show that the trademark isn’t a commonly used phrase. You may argue against the refusal by providing specific, fact-based points showing that the phrase isn’t commonly used on various products or for other services. 
• Include evidence of trademark use. Provide the examining attorney with real-world examples of how you use the phrase as a trademark for your goods or services.