When applying for a trademark, the application gets assessed by an intellectual property office - a government body responsible for overseeing intellectual property rights in a given country. Registration is not guaranteed, and if the examiner discovers a problem preventing the trademark from being registered, they issue a so-called office action.
An office action contains the reasons for the (temporary) dismissal and suggested actions the applicant can take to remedy the situation. However, the legal jargon can leave applicants feeling confused. That's why we put together a list of frequently asked questions about office actions - how they work in general and how to overcome the most common ones.
In our answers, we focus primarily on US trademark law and office actions issued by the USPTO. If a distinction between a general and US-specific answer is needed, we will provide further clarification.
Does receiving an office action mean my trademark is denied?
Can I amend my trademark application in response to an office action?
Can I submit new evidence or information as a part of an office action response?
How long does it take for the USPTO to review my response to an office action?
If my office action response gets accepted, what happens next?
What is a suspension letter in context of trademark office actions?
Is there any other solution to an office action besides responding?
What are the consequences of repeatedly receiving office actions for the same trademark application?
What is Section 2(a) Refusal - Disparagement, Scandalousness, Immorality, or Deceptiveness?
What is Section 2(b) Refusal - Consisting of or comprising a flag?
What is Section 2(e)(2) Refusal - Primarily Geographically Descriptive?
What is Section 2(e)(3) Refusal - Geographically Deceptively Misdescriptive?
What is Section 2(e)(4) Refusal - Primarily Merely a Surname?
What does "Mark Description Clarification" in my office action mean?
What does "Identification of Goods/Services" in my office action mean?
Can I amend the goods and services listed in my application in response to an office action?
What does "Prior pending application" in my office action mean?
What does "Domicile Address Required" in my office action mean?
What does "Entity Clarification Required" in my office action mean?
What does "Transliteration Required" in my office action mean?
What does "Controlled Substances Act Refusal" in my office action mean?
Our team of experienced trademark attorneys is here to help you! Simply send us an email outlining your request and we'll be happy to assist you.
