In 3-6 months after filing your trademark application with the USPTO, an examining attorney will review your application filing to determine if it is eligible for registration. If you recieve a response instead of an approval, do not be discouraged, this doesn't necessarily mean your trademark will not be granted. If you are unsure about what exactly the USPTO Examiner is requesting from you, we understand how confusion can turn to panic. 


There are two types of Office Actions:



A non-final Office action informs you of an issue for the first time. An initial Office Action (Refusal to Register) may issue that requires a written response or argument in order to overcome the first refusal and advance your mark to registration.


A final Office action is sent if your response to a prior Office action did not resolve the issue that was identified. The only way to respond to a final Office action is either to comply with the requirements contained in the letter or to submit an appeal to the Trademark Trial and Appeal Board.



The examining attorney may believe that your mark will likely cause confusion with an existing registered mark or with a mark for which an application was filed earlier than yours.

Trademark Act Section 2(d) bars registration of an applied for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.

Let our experts present a strong, persuasive legal argument using a combination of the DuPont factors to resolve the issue in your favor and help explain the difference between the two (or more) marks.


The examining attorney may believe that your mark merely describes a quality of the goods or services. It is important to remember that the examining attorney bears the burden of presenting a prima facie case that the mark is merely descriptive before the examining attorney can properly reject the mark. To carry this burden, the examining attorney must present substantial evidence that the mark is merely descriptive.

Alternatively, the examiner may believe that the mark is generic and incapable of distinguishing your goods or services.



An application must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.

While the exact nature of the services does not need to be specified in the specimen, there must be something, which creates in the mind of the purchaser an association between the mark and the service.

Speak with our experts today on how we can file a substitute specimen or new specimen that shows a direct association between the applied for mark and the identified goods and/or services. 

What can you expect when you call MU patents about an Office Action from the USPTO:

  1. We will look over the Office action for you and conduct a cursory review of the Action that you received.
  2. We will provide you with an indication of what might be involved and what the Examiner is requesting
  3. We will provide you with costs that might be involved in preparing and filing a response.
  4. On your approval, we will proceed to conduct a detailed analysis of the Office Action.
  5. We will prepare a draft response to the Office Action and incorporate your feedback where possible into the response.
  6. On your approval, we will file the response and report the filing to you.



Call us today to get started on your Office Action response: 858.263.7554

At MU Patents, we love what we do.  We believe to encourage individuals and small businesses to continue inventing, there needs to be teams out there that can protect them and make their cutting edge ideas happen. Our commitment to protecting your interests means a frank discussion of your protection goals, a tailored strategy to meet those goals, at an affordable, flat rate price.

The first first conversation with us regarding your trademark office action is complementary, call us today.


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