Responding to Office Actions
An office action is a formal notice from a USPTO examining attorney raising issues with your application. If you do not respond by the deadline, your application is abandoned. This page explains the different types of office actions and how to prepare a response.
What is an office action?
After you file a trademark application, an examining attorney at the USPTO reviews it for compliance with federal law and for potential conflicts with existing marks. If the examiner identifies issues, they issue an office action — a written notice explaining the concerns and how to address them.
Types of office actions
There are two main types, and each has a different response window.
- Non-final office action — your first response opportunity (3-month deadline, extendable to 6 months with a fee)
- Final office action — issued if issues remain after your first response (3-month deadline, extendable to 6 months with a fee)
- Suspension notice — application is on hold pending a prior-filed application
- Priority action — specific requirements, usually with shorter deadlines
Common issues raised
Most office actions fall into two broad categories: substantive and procedural refusals.
- Likelihood of confusion with an existing mark
- Merely descriptive or generic refusals
- Ornamental or functional refusal
- Wrong or overly broad goods/services description
- Incomplete specimen or unacceptable specimen type
- Missing or unclear owner information
- Likely false suggestion of a connection (Section 2(a))
How to respond
A response to an office action is a formal legal document. It must directly address every issue raised — and it must be filed before the deadline to avoid abandonment.
- Read the office action carefully and identify each refusal
- Decide whether to argue, amend, or both
- Draft the response with supporting evidence if required
- File through the USPTO's TEAS response system
- Track the new examination status for further actions
Deadlines matter
If you miss the response deadline, the USPTO declares your application abandoned. Reviving an abandoned application requires a petition to revive with a fee — and is not guaranteed.
Response windows are typically 3 months from the office action mailing date, extendable to 6 months with an additional fee.
Not sure where to begin?
Talk to a specialist and we'll guide you through the right next step.