What Happens When You Receive a Trademark Office Action?

If you’ve received an Office Action from the U.S. Patent and Trademark Office (USPTO), you’re not alone. Many small business owners and solo entrepreneurs encounter these notifications after filing a trademark application. While some rejections are serious, many are fixable.

One of the most common reasons applicants receive an Office Action is due to an improper description of the mark, which can take several forms, including:

  • Specimen Refusal – The applicant has not provided sufficient proof of the mark in use.

  • Improper Identification of Services – The way goods or services are described does not align with USPTO classifications.

  • Explanation of the Mark’s Significance – The applicant needs to clarify the meaning of the mark.

If any of these issues arise, the USPTO will issue an Office Action, giving the applicant a limited time to correct the errors.

 

A Real-World Example:  U.S. Application Serial No. 98280895 for “Joey Whispers 1776”

To illustrate how these issues commonly appear, consider the application for the trademark “Joey Whispers 1776.” The USPTO did not reject the mark outright but instead issued a Non-Final Office Action citing multiple concerns:

  1. Specimen Refusal – The applicant failed to properly show the mark in use in commerce.
  2. Identification of Services Issue – The application’s description of services was vague or improperly classified.
  3. Explanation of Mark’s Significance – The examiner requested additional clarification about what the mark means in context.

To a business owner unfamiliar with trademark law, these refusals might seem confusing or even discouraging. However, these types of Office Actions are often correctable with the right legal guidance.

Need Help with an Office Action? Contact Twisdale Law, PC Today!

What These Issues Mean in Plain English

  • Specimen Refusal: The USPTO wants proof that your trademark is actually being used for the goods or services listed. This means providing an appropriate example (such as a website screenshot or product packaging) that clearly shows the mark in a commercial setting.

  • Improper Identification of Services: If the description of services is too broad, vague, or doesn’t fit USPTO classifications, it needs to be revised to align with their standards.

  • Explanation of the Mark’s Significance: The examiner simply wants to know if the mark has a specific meaning, such as being a surname, a geographical location, or a commonly used phrase. Likely, the explanation will result in some restriction, but not a full rejection.

     

What Happens If You Don’t Respond?

Failing to respond to an Office Action means that your application will be abandoned, effectively wasting your time and the hundreds of dollars spent on filing fees. To avoid this outcome, it is strongly advised that applicants seek legal counsel, such as Twisdale Law, PC, to address these issues correctly and efficiently.

How a Trademark Attorney Can Help

Many first-time filers don’t realize that these Office Actions are often routine and fixable, but they require precise legal responses. A trademark attorney can help by:

  • Correcting and refining the goods/services description to meet USPTO requirements.
  • Preparing an appropriate specimen that satisfies the USPTO’s criteria.
  • Responding to the examiner with the necessary clarifications to keep your application moving forward.

Additionally, contacting Twisdale Law, PC prior to filing can help prevent these issues altogether for otherwise allowable trademarks. By ensuring that your application is properly prepared, you can minimize the chances of receiving an Office Action.

Need Help with an Office Action?

If you’ve received an Office Action from the USPTO and are not sure how to proceed, Twisdale Law, PC is here to help. We assist small business owners and entrepreneurs in overcoming common trademark rejections and securing their brand protection. Contact us today for guidance on your trademark application.

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