Trademark Office Actions

Responding to a Trademark Office Action

After an initial review by an examining attorney, the U.S. Patent and Trademark Office (USPTO) may issue an Office Action refusing a trademark application. This does not necessarly mean your trademark is denied—it simply means additional steps are needed to move forward. Applicants have three months from the date of issuance to respond and address the issues raised.

Types of Trademark Refusals

Informalities & Minor Corrections
Some refusals are procedural or administrative in nature, requiring simple adjustments to the application. These may include:

• Clarifying the identification of goods or services
• Correcting the applicant’s legal entity status or citizenship
• Providing acceptable trademark specimens

These types of refusals can often be resolved with minor amendments or clarifications, allowing the application to proceed toward publication.

Substantive Trademark Refusals
More complex refusals require legal argumentation and strategic response. These may include:

• Likelihood of Confusion – If the USPTO believes your mark is too similar to an existing registered trademark.
• Merely Descriptive or Generic – If the mark is deemed too descriptive of the goods/services it represents.
• Surnames or Geographic Significance – If the mark is primarily a surname or geographically descriptive.
• False Suggestion of Connection – If the mark appears to falsely suggest a connection with a famous person, brand, or institution.
• Scandalous or Offensive Content – If the mark contains wording or imagery considered immoral or offensive.

How We Can Help

At Patel IP, our experienced trademark attorneys will provide a free evaluation of your Office Action and determine the best strategy for overcoming the refusal. We have successfully responded to a wide range of trademark refusals and can guide you through the process with expert legal support.

After reviewing your case, we will provide a clear, upfront quote for preparing and filing your response.

Don’t let an Office Action delay your trademark registration. Request a free evaluation and get a quote now:

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Sample of Our Successful Office Actions Responses:

Refusals based on Likelihood of Confusion:

Successfully argued that no likelihood of confusion exists between GLUCOJOINT, Ser. No. 85537657, and GLUZOJOINT-F, Reg. No. 3788282 — both for dietary supplements. Read More

Argued that no likelihood of confusion exists between FILTER PRO Ser. No. 86170150 for air and liquid filters for industrial installations, and FILTER PRO Reg. No. 2509352 for oil filters, air filters, and fuel filters. Read More

Argued sucessfully that no likelihood of confusion exists between EXCELLANCE Ser. No. 79138280 for perfumes and cosmetics, and EXCELLENCE Reg. No. 1116798 for hair coloring preparations owned by L’Oreal and between EXCELLENCE Reg. No. 3553048 for colognes, perfumes and cosmetics. Read More

Successfully argued that no likelihood of confusion exists between SPYRAL, Ser. No. 85479842, for “live performances by a musical band” and SPYRALI, Reg. No. 3627046, for “organization of exhibitions for cultural or entertainment purposes.” Read More

Successfully argued that no likelihood of confusion exists between AZBOOKS, Ser. No. 85514623, and A-to-Z MYSTERIES, Reg. No. 2235339 — both for “books”. Read More

Successfully argued that no likelihood of confusion exists between CSS CORREA CLAIMS SERVICE, Ser. No. 85335538, and CSS COASTAL CLAIMS SERVICES, Reg. No. 3208433, and CSS, Reg. No. 3037532 — all for insurance-related services. Read More

Successfully argued that no likelihood of confusion exists between ELECTBENEFITS, Ser. No. 86351419, and SELECTBENEFIT Reg. No. 1722413 both for financial services. Read More

Refusals based on Descriptiveness:

Successfully argued that COURSE ASSIGN, Ser. No. 85608396 is not “merely descriptive” for on-line software which allows students and teachers to correspond and discuss homework assignments because the “COURSEASSIGN” services do not literally “assign courses”, and COURSEASSIGN is a “coined term” with a unique, non-descriptive meaning. Read More

Successfully argued that COURSE ASSIGN, Ser. No. 85608396 is not “merely descriptive” for on-line software which allows students and teachers to correspond and discuss homework assignments because the “COURSEASSIGN” services do not literally “assign courses”, and COURSEASSIGN is a “coined term” with a unique, non-descriptive meaning. Read More

Successfully argued that the mark XLBRAKE, Ser. No. 85351126 is not “merely descriptive” for “extra-large” sized auto brakes because “XL” refers to “acceleration”, not the size of the brakes; and because auto brakes are not normally sold in “extra-large” size. Read More