Received a USPTO Office Action? Understand the refusal before you respond.
A refusal is not always the end of an application, but USPTO response deadlines are strict and unforgiving.
John reviews the Office Action and explains what the examining attorney is actually raising, even if he did not file the original application. If the firm is retained with sufficient time and receives the information and cooperation needed to complete the work, the response will be prepared and filed within the agreed scope before the applicable deadline.
What an Office Action is.
An Office Action is a written communication from a USPTO examining attorney raising one or more issues with a pending trademark application. It is not a rejection of your business or your brand, it is a formal step in the examination process, and many Office Actions can be responded to.
A non-final Office Action is typically the first refusal or requirement raised on an application; it allows a full response addressing the issues in detail. A final Office Action is issued when the examining attorney maintains a refusal after a first response and generally narrows the options available, often to a request for reconsideration, an appeal, or, in some cases, express abandonment. Understanding which type you received affects the strategy for responding.
Common refusals.
Section 2(d) likelihood of confusion
The examiner believes your mark is similar enough to an existing registered or pending mark, used on related goods or services, that confusion among consumers is likely.
Section 2(e)(1) descriptiveness
The examiner believes the mark merely describes a feature, function, ingredient, or characteristic of the goods or services, rather than identifying their source.
Specimen refusal
The evidence submitted to show use of the mark does not adequately show the mark used in connection with the specific goods or services identified in the application.
Failure-to-function refusal
The examiner believes the proposed mark, as used, does not operate as a source identifier, for example, because it reads as a common phrase, a slogan, or purely ornamental matter rather than a brand.
Identification/classification issues
The wording used to describe the goods or services is too vague, too broad, uses non-standard terminology, or is placed in the wrong class.
Disclaimer requirement
The examiner requires you to disclaim exclusive rights to a portion of the mark that is generic or merely descriptive on its own, apart from the mark as a whole.
Ownership/entity issue
A question about who legally owns the mark, for example, a mismatch between the applicant named and the entity actually using or intending to use the mark.
Domicile requirement
A question about the applicant’s permanent legal residence or principal place of business, which can affect filing requirements, including whether a U.S.-licensed attorney must be appointed.
Informational matter
The examiner believes the proposed mark conveys general information rather than identifying the source of the goods or services, for example, wording that reads as a message rather than a brand.
Ornamental use
The specimen shows the mark used only as decoration on the goods (a common issue with wording printed on the front of apparel) rather than as a source identifier.
Geographic descriptiveness
The mark is refused because it primarily identifies a geographic place associated with the goods or services, which can raise descriptiveness or deceptiveness concerns.
What happens after you submit.
- Step 1
Initial conflict check
The firm confirms there is no conflict of interest before reviewing any substantive detail of your matter.
- Step 2
TSDR & application review
John reviews your application file and the Office Action itself through the USPTO’s TSDR system.
- Step 3
Assessment of evidence & options
John evaluates the strength of the refusal, the available legal arguments, and any evidence that could support a response.
- Step 4
Flat-fee quote
Once the refusal and record are understood, you receive a written flat-fee quote for the response before any drafting begins.
- Step 5
Response drafting
John drafts the legal argument, amendment, or evidence needed to respond to the specific refusal.
- Step 6
Client review
You review the drafted response before it is filed.
- Step 7
Filing
Response preparation and filing within the agreed scope, subject to timely engagement and client cooperation.
- Step 8
Post-response monitoring
The firm monitors for the examiner’s next action and reports developments through the agreed endpoint of the engagement.
Deadlines are strict
USPTO deadlines are strict. Contacting the firm does not extend the response deadline, and the firm cannot act until conflicts are cleared and an engagement is completed.Pricing, quoted before drafting begins.
Responses start at $595. The final fee depends on the refusal, record, evidence required, deadline, and whether the Office Action is final.
Questions about Office Actions.
Last updated July 2026.
Can you help if I filed without a lawyer?
Is every refusal worth fighting?
What is a final Office Action?
Can I amend the mark?
Can I change the owner?
How long does the examiner take after a response?
What happens if I miss the deadline?
Do you handle appeals?
Act before the deadline, not after it.
The sooner John reviews your Office Action, the more options are realistically available to you. Reach out now, and receive a written flat-fee scope before any drafting begins.