Reasons For Getting a Trademark Office Action

Richard Rimer

September 14, 2022

When you file a trademark application, you hope to receive a “mark allowed” notice from the USPTO. This indicates that your trademark is approved and registration is imminent. Unfortunately, not all applications result in this outcome. You may receive an office action instead – and this can be cause for concern. In this blog post, we’ll discuss the reasons you might get an office action.


The most common type of trademark office action is the disclaimer office action. The trademark office may require a trademark disclaimer if the mark is too common. Also if it is too descriptive or if it would be difficult to enforce. For example, if an applicant tries to trademark the word “computer,” the trademark office may issue a disclaimer saying that the word is too common to be trademarked. In most cases, the trademark office will only issue a disclaimer if the applicant tries to trademark a word or phrase that is already in use by other businesses. As a result, applicants who receive disclaimers from the trademark office can still use their trademarked words or phrases. However, they may have to share them with other businesses. A trademark disclaimer gives the trademark owner the right to use the trademark without fear of being sued for infringement. However, it does limit the owner’s rights to the trademark.

Specimen Refusal

Another extremely common way that people misuse trademarks is by failing to use the trademark in conjunction with the actual goods or services that it represents. For example, a trademark for a clothing line. You would need to use the trademark on the clothing itself, in advertising, or on signage. Simply using the trademark as a tagline or slogan without using it in connection with the actual goods or services could result in a refusal of your specimen by the USPTO. When you receive a refusal from the trademark office in response to your specimen submission, it can be confusing and frustrating. However, it is important to understand that this refusal is not necessarily an indication that your trademark will be refused. In many cases, the office simply needs additional information to decide.

Likelihood of Confusion

For a trademark to be registered, it must not be likely to be confused with other existing trademarks. The USPTO considers many factors when determining whether or not a trademark is too similar to another. This includes the similarity of the marks, the similarity of the goods or services associated with the marks, and the likelihood that consumers would mistake one for the other. If the USPTO believes that there is a likelihood of confusion, it will issue an office action requiring the applicant to demonstrate why registration should be allowed. By carefully considering these factors, businesses can help to prevent confusion and protect their valuable trademarks.

Surname Refusal

If you’ve received an office action from the USPTO rejecting your trademark application, it may be because your proposed mark includes a surname. While surnames are not automatically ineligible for trademark protection, they can be difficult to register. To overcome a surname refusal, you will need to show that the mark has acquired distinctiveness. This means that the public has come to recognize the mark as a source indicator for your goods or services. To establish acquired distinctiveness, you may submit evidence of extensive advertising and promotion featuring the mark, long-term use of the mark, or unsolicited media coverage. If you can demonstrate that the mark has acquired distinctiveness, you should be able to overcome the surname rejection and move forward with your application.


The process of filing a trademark application can be difficult and confusing. Trademark office actions from the United States Patent and Trademark Office (USPTO) does not mean that your trademark will never be approved. It is simply an indication that there are some issues with your application that need to be addressed. That’s where Initiating Protection Law Group, LLC comes in. We offer a wide range of services related to intellectual property protection, including trademark prosecution, copyright clearance, and more. Let us help you navigate the complex process of trademark applications and get your business the protection it needs. Contact us today for a free consultation!