You’ve filed your trademark application — and then you get a letter from the USPTO. It’s called an Office Action, and it means the examining attorney found an issue that must be resolved before approval.
The good news? Most Office Actions can be overcome — if handled properly.
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What Is a USPTO Office Action?
An Office Action is a formal notice that your application needs clarification, correction, or a legal argument before proceeding.
There are two main types:
- Non-Substantive (Administrative) – issues like formatting, grammar, ownership, or missing specimens.
- Substantive – legal concerns like likelihood of confusion, descriptiveness, or similarity to another mark.
Common Reasons for Refusal
- Your mark is too similar to another registered mark
- It merely describes your goods or services
- You filed in the wrong class
- The specimen doesn’t show actual use in commerce
How to Respond
You have six months to respond. The reply must be persuasive.
A trademark attorney can draft a legal argument citing relevant case law and USPTO precedent to support your position.
What Not to Do
* Don’t ignore the notice — your application will be abandoned.
* Don’t copy generic templates — each Office Action is unique.
* Don’t refile a new application unless advised — it can weaken your position.
A skilled trademark attorney can often turn a potential refusal into an approval through precise legal reasoning.
Contact Ganesan Law, www.ganesanlaw.com to review your USPTO Office Action and prepare a strong response.
