Office Actions Explained: Why Your Trademark Application Was Flagged
Written by JLG - June 5, 2025
After submitting a trademark application, receiving an Office Action from the United States Patent and Trademark Office (USPTO) can be concerning. However, this notice is a routine part of the trademark review process. At Jafari Law Group, we assist clients in understanding why an Office Action was issued and how to respond effectively.
What Is an Office Action?
An Office Action is a formal response from the USPTO examiner reviewing your application. It outlines any legal or procedural issues that must be addressed before your trademark can move forward. This does not mean your application has been denied, it simply means further clarification, correction, or legal argument is needed.
Two Types of Office Actions
- Non-Final Office Action
This is typically the first notification and lists initial issues the examiner found. You can respond with clarifications, amendments, or legal arguments. - Final Office Action
Issued when the examiner believes unresolved issues remain after a prior response. You can still reply, request reconsideration, or appeal, but options become more limited at this stage.
Common Reasons for an Office Action
- Likelihood of confusion with an existing registered trademark
- Descriptive or generic wording that lacks distinctiveness
- Improper identification of goods or services
- Unacceptable specimen showing how the trademark is used
- Missing or incorrect information in the application
Each of these issues can potentially be resolved, but doing so often requires careful legal reasoning and strategic adjustments.
Responding to an Office Action
You typically have six months to respond to an Office Action. Failure to respond within this window may lead to abandonment of your application. A timely and thorough reply can keep your application moving forward.
At Jafari Law Group, we analyze the examiner’s objections, prepare a detailed response, and advise you on whether it is better to amend your application, argue against the rejection, or take another legal route. The goal is to strengthen your position without weakening your trademark rights.
Get Help With Your Office Action
Office Actions are often manageable with the right support. Whether it involves clarifying goods, submitting a new specimen, or addressing potential conflicts, we work with you to find a viable path forward.If you have received an Office Action or anticipate one, contact Jafari Law Group for a free consultation. We can review your application and help determine the next steps toward securing your trademark registration.