What to Do When You Get an Office Action for Your Trademark

So, you took the DIY approach to trademarking your brand – exciting! You navigated the application process, hit submit, and felt a sense of accomplishment. But now, you’ve received an Office Action from the USPTO, and suddenly, uncertainty sets in.

First, take a deep breath. An Office Action is not a rejection, it’s simply the USPTO’s way of saying, “We need some adjustments before we can move forward.” In many cases, these issues are minor and completely fixable. The key is knowing exactly what needs to be addressed and responding strategically.

Oh, and one more thing… expect a flood of spam. Now that your trademark application is public, you may start receiving official-looking notices warning you about deadlines, renewal fees, or registration in private databases. These can seem urgent, but most of them are scams designed to trick business owners into paying unnecessary fees. Later in this post, I’ll walk you through how to spot and avoid these misleading solicitations.

For now, let’s focus on what really matters. Understanding your Office Action and what steps to take next.

First, What Is an Office Action?

An Office Action is basically a letter from the USPTO saying, “Hey, we have some issues with your trademark application.” These issues can be simple and easy to fix—or more complicated and require a solid legal strategy. The good news? Many of the most common refusals are fixable. The bad news? If handled incorrectly, you might have to start over.

Let’s break down the most common types of Office Actions and how to handle them.

1.Fixable Non-Substantive Refusals (AKA: The Easy Fixes)

These are the most common and least scary types of refusals:

Identification of Goods & Services Needs Correction: The USPTO wants you to be more specific about what your trademark covers.

Example: You applied for “shirts and mugs,” but you actually have an online retail store that sells third-party shirts and mugs. That’s a classification mismatch and might not be fixable. 

Disclaimer Required: If part of your trademark is too generic, you might need to “disclaim” it.

Example: “Diamond Betty’s Hair Salon” – You can trademark the full name, but you must disclaim “Hair Salon” because no one can own that phrase exclusively.

Invalid Specimen (Proof of Use Issue): If the USPTO says your proof of use doesn’t match your goods/services, you may need to submit new evidence.

Example: You sell digital courses, but your proof of use looks like a blog post instead of a sales page.

2.The Tougher Ones: Likelihood of Confusion & Legal Arguments

Now, here’s where things can get tricky.

Likelihood of Confusion: If the USPTO thinks your mark is too similar to an existing trademark, you have two options:

1. Narrow down your goods & services to avoid overlap.
2. Submit a legal argument with strong evidence (and I mean pages of legal arguments and case law).

Example:

Let’s say you’re registering a trademark for a pet grooming business that also sells pet accessories. Another business already owns a trademark for a pet accessories retail store, but they don’t do grooming. You could drop the retail store services from your application and potentially move forward with just the grooming business.

This is where experience matters because simply arguing “our names sound different” won’t cut it. It’s about what’s on paper and how the law sees it, not just how things work in real life.

Office Action Deadlines & Strategy

When you receive an Office Action, the clock starts ticking. You have three months to submit a response. If you need more time, you can request a one-time extension for an additional three months (for a government filing fee). But once that extended deadline hits, you must submit your response, or your application will be considered abandoned.

If your first response doesn’t successfully resolve the issues, the USPTO will issue a Final Office Action. At this stage, you typically have just one more opportunity to fix the problem before your application is denied altogether. This is why it’s critical to get your first response right—your approach now directly impacts your ability to secure your trademark.

And here’s the part many people don’t realize: if your responses aren’t successful, you may have to start the entire trademark process over again.

Office Action Strategy Tips from a Trademark Lawyer

Don’t rush your response and make sure you truly understand the issues at hand! Once you remove a class of goods/services or submit evidence, you can’t take it back. In some cases, it’s smarter to wait (or request a suspension) if another application ahead of yours might clear the way.

Now, let’s talk about that spam I mentioned earlier because if you haven’t already, you’re about to get hit with a wave of official-looking scam letters.

How to Spot Trademark Office Actions Scams:

1. Letters that look super official but don’t actually come from the USPTO
2. Companies demanding hundreds (or thousands) of dollars to “publish” your trademark
3. Notices warning you that your trademark is about to expire (even though it’s still pending!)
4. Emails pressuring you to “act now” or lose your rights
5. Trademark “lawyers’ that are quoting you over email without a consultation

Real USPTO Correspondence:

1. Comes from @uspto.gov email addresses
2. Lists your actual trademark application number
3. Doesn’t demand weird fees for “registration” in private databases

Fake Notices:

1. Often come from random law firms or fake “trademark registries”
2. Try to scare you into paying for unnecessary services
3. Have fine print that says something like, “This is not an invoice” (but still looks like a bill)

Bottom Line: If you get something suspicious, don’t pay it! When in doubt, ask a real trademark attorney.

What Should You Do When You Get An Office Action?

If your Office Action is minor, you might be able to handle it yourself with some careful changes. But if it’s a likelihood of confusion, refusal or something more complex, don’t DIY your response. This is where an attorney can make or break your application.

Responding to an Office Action isn’t just about fixing errors, it’s about having a smart, strategic approach that maximizes your chances of approval while protecting your brand long-term. A weak response can back you into a corner, limit your rights, or worse—force you to start over completely.

That’s where our highly experienced trademark team at DiAngelo Law comes in.

We help you move forward with confidence by providing you with a:

Comprehensive Office Action Review – we’ll analyze your Office Action in detail, identifying what’s actually fixable and what needs a deeper legal strategy.

Tailored Response Strategy – No cookie-cutter templates here. We’ll craft a response that gives you the strongest legal argument while keeping future business goals in mind.

Risk Assessment & Backup Plan – I’ll help you weigh your options and determine the best course of action—whether that means responding immediately, requesting a suspension, or preparing for a second round if needed.

Avoiding Costly Mistakes – I’ll make sure you don’t unknowingly limit your trademark rights, submit weak evidence, or remove something you can’t get back later.

Time & Stress Savings – No more decoding legal jargon or second-guessing your response. I’ll handle the complexities so you can stay focused on growing your business.

Don’t Let One Office Action Derail Your Brand

An Office Action is just a hurdle, not a dead end but only if you respond strategically. Let’s make sure your response is strong, well-supported, and puts you in the best position for approval.

Book a free consultation today, and let’s get your trademark back on track. We’ll go over your Office Action, discuss your best options, and create a plan to move forward with confidence.