USPTO Office Actions: Dealing With Procedural Challenges

USPTO Office Actions Dealing With Procedural Challenges

Table of Contents

After filing your US trademark application, you may encounter various types of office actions from the US Trademark Office (USPTO). These are official communications that inform you of technical issues or deficiencies with your application that need to be addressed before your trademark can be registered. These are related to formalities or technical requirements of the application.  

Here are common types of procedural office actions and how to deal with them


Adding a Disclaimer to your mark for certain descriptive elements.

For example, an application to register the trademark “REXY’S PET BEDS” for pet beds, will require a disclaimer of the term “PET BEDS” since it is descriptive of the products included under the application. A “disclaimer” is a statement that you, the applicant, do not claim exclusive rights to an unregistrable component of the mark (in this example, “PET BEDS”). If you agree to the disclaimer your mark will still be “REXY’S PET BEDS”, though the record will show that the term PET BEDS is disclaimed.  

Amending the Identification of Goods

To comply with the product classification and description in accordance with the USPTO manual. The USPTO classification system is divided into classes 1-34 for goods; and classes 35-45 which cover services. A trademark application needs to include the goods you are selling or intend to sell under your mark. For example, T-shirts go under Class 25, and you need to list the goods under your application using the language in which they appear on the USPTO manual. Doing so will help avoid an examiner refusal and comply with the classification requirements. If you included unacceptable items under your list of goods, the examiner will likely suggest the correct classification and language for your goods. Note, it is important to be accurate with the list of goods when filing your application as an identification amendment can only limit the scope of protection sought for your goods, but you cannot broaden the list. In other words, generally you will not be allowed to add goods to your application after it is filed. Your trademark attorney can examine the amended list and advise if it provides adequate protection. 

Amending the Description of the Mark

if it is a design mark. Trademarks can be divided into Word Marks, also known as Standard Character Marks and Design Marks (logos). If your trademark is a Design Mark that includes a drawing or logo you will be required to enter a description of the design element in your trademark application. The examiner may require that you amend the description of the design element and suggest acceptable language for the amendment.  

Adding a Domicile Address.

If you applied to register your trademark under a company such as an LLC, you may have used an agent address under the owner section of your trademark application. The examiner may require that you add a domicile address, such as your home address, to resolve this issue. Importantly, the domicile address will remain hidden while the business address included under the owner section will be publicly visible on the USPTO website.  

Submitting a substitute specimen.

We previously covered the differences between a trademark application based on Intent to Use and Use in Commerce, i.e., before or after you have started selling products under your brand. In any case, at some point of the application process you will be required to submit a specimen to demonstrate use of your mark in commerce. The examiner may reject the specimen if it does not comply with the strict USPTO requirements. For example, if you filed for a Word Mark, you may generally submit a screenshot of your selling page to show use of your mark. The examiner may require that you submit a substitute specimen, e.g., new selling page screenshot showing: your trademark name as included in the application; the full URL and date on which the screenshot was captured; the correct goods, i.e., products that correspond with those included under your application, etc. You will need to carefully review the office action and it is imperative to make sure the substitute specimen submission is properly handled.  

Deadline to Respond The USPTO Ofiice Action

You will have 3 months from the date an office action issuance to submit your response or a request for a 3-month extension. If you do not timely submit the response or extension request the USPTO will issue an abandonment notice for your application.  

Can I Revive my Trademark Application if I failed to Respond to an Office Action?  

Yes, if this is done within 2 months from the issuance of the USPTO abandonment notice. To do so, you will usually need to file a petition to revive the application along with a response to the office action and the official extension request fee.  

We will cover substantive office actions in our next article.  

By understanding the types of office actions and how to respond to them, you can navigate the trademark registration process effectively and increase the likelihood of successfully registering your trademark. It is recommended to consult a trademark attorney to avoid unnecessary delays in the application process or a final refusal of your mark.