A formal communication from the United States Patent and Trademark Office (USPTO) to a trademark or patent applicant, outlining issues or requirements that must be addressed before the application can proceed toward approval.
What is an Office Action?
An Office Action is an official letter issued by a USPTO examining attorney during the review of a trademark application, or by a patent examiner in the case of patents. In trademark matters, the Office Action explains why the application cannot be approved in its current form and specifies what needs to be corrected or clarified. This may include administrative issues, such as incomplete information or improper classification, or substantive refusals, such as a likelihood of confusion with an existing mark, descriptiveness, or failure to function as a trademark.
There are two main types of trademark Office Actions: non-final and final. A non-final Office Action is typically the first notice and allows the applicant to respond with corrections, arguments, or evidence. If the response does not resolve all issues, the USPTO may issue a final Office Action, after which the applicant’s options are more limited, such as filing an appeal with the Trademark Trial and Appeal Board (TTAB).
In the context of an Intent-to-Use application, an Office Action might also involve issues with the submitted specimen or proof of use in commerce. Responding to an Office Action requires careful attention to USPTO guidelines and must be done within the stated deadline, usually six months from the issuance date. Failure to respond in time will result in the abandonment of the application.
For non-U.S. applicants, including non-U.S. founders with U.S. companies, addressing an Office Action often requires working with a U.S.-licensed trademark attorney, as the USPTO requires legal representation for foreign-domiciled applicants.
