Responding to Trademark Office Actions


General Information

The USPTO makes is relatively easy for anyone to file an online trademark application; however, the USPTO makes it just as easy to make a fatal error in filing the application. Additionally, unless you are familiar with the USPTO filing and examination process, the USPTO may likely refuse registration for a variety of reasons. The trick is to know how to navigate the USPTO waters and avoid the potential pitfalls. In most instances, the USPTO does not immediately approve the mark for registration, but instead, issues an “Office Action” listing grounds for refusal. These grounds may include one or more of the following:

All USPTO Office Actions are different because each mark raises unique issues. In most cases, the USPTO Office Action only requires minor amendments, but in other instances, a detailed response may be required.

The USPTO requires that a response to the outstanding Office Action be filed within six (6) months of the date of issuance. If no response is timely filed, the USPTO will abandon your application and any filing fees will not be refunded.

Note – if the USPTO abandons the application, you have two (2) months to file a Petition to Revive the Application and respond to the USPTO refusal (of course, after paying additional USPTO fees.


Finally, the USPTO will issue a FINAL Office Action. At such point, the Applicant has one last opportunity to enter evidence into record and prepare a brief attempting to convince the Examining Attorney to withdraw the refusal. Applicant’s have six (6) months to file a Request for Reconsideration prior to responding to the FINAL Office Action and filing a Notice of Appeal to the TTAB. Upon filing the Request for Reconsideration, the TTAB will toll the Appeal and send the case back to the Examining Attorney for reconsideration. If the Examiner rejects the reconsideration, then the Applicant will be given a date (60 day) to file an ex parte appeal. In some cases, a prior registration that was barring registration may cancel due to abandonment which opens the door to the Applicant overcoming the refusal.


When filing any trademark application on our client’s behalf, TrademarkAuthority drafts the application to avoid any of the above USPTO refusals. In the event a client receives an Office Action that requires minor amendments, we will prepare and respond to all informal USPTO Trademark Office Actions on our client’s behalf without any additional costs, unless the USPTO requests additional filing fees or the response requires more than 30 minutes of time. In the event of a substantive refusal, such as your proposed mark creates a likelihood of confusion with a prior mark, we will provide you with a firm estimate on the fees associated with preparing an appropriate response before doing any work.

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TrademarkAuthority is a service exclusively licensed to Pearl Cohen Zedek Latzer Baratz LLP ("Pearl Cohen"), an intellectual property law firm located in New York, NY, that provides personal and expert trademark and copyright legal services covering the U.S., Europe, Canada, Australia, Mexico, Japan, China and many other countries throughout the world. This Web site may be considered Attorney Advertising. The information provided on this site is not legal advice, but general information on legal issues relating to trademark searching and registration. Prior results do not guarantee a similar outcome.

TrademarkAuthority was founded by an expert trademark attorney and former U.S. Trademark Office Examining Attorney who has over twenty-two years experience representing clients on a variety of trademark and copyright law issues. Our legal services include trademark searching, filing trademark applications, responding to USPTO Office Actions, filing Statements of Use, representing clients before the U.S. Trademark Office, Federal and State courts, maintaining trademark registrations, monitoring, policing and enforcing trademark rights and filing copyright registrations.