Office actions in any country
Every office examines applications, and most send an objection letter when something is wrong: the mark is descriptive or not distinctive, it conflicts with an earlier mark (in offices that check this), or the goods and services wording isn’t accepted. Deadlines range from about one to six months and some can be extended. International (Madrid) designations get a “provisional refusal” and usually need a local agent to answer. Each country guide explains that office’s examination.
United States: the deadline
For most applications you have three months from the issue date to respond. You can buy one three-month extension for $125, but you must request it before the first deadline. Applications that came in through the Madrid system have six months, with no extension.
If you miss it, the application is abandoned. You may file a petition to revive within two months of the notice of abandonment ($250 online), stating the delay was unintentional.
United States: common reasons and what helps
| Refusal or requirement | What usually helps |
|---|---|
| Likelihood of confusion (Section 2(d)) with an earlier mark | Arguing the marks, goods or buyers differ; narrowing your goods; a consent agreement with the owner |
| Merely descriptive (Section 2(e)(1)) | Arguing the mark is suggestive; moving to the Supplemental Register; evidence of acquired distinctiveness |
| Specimen refused | A new specimen showing the mark on the goods, packaging or a web page with a way to buy |
| Identification of goods unclear | Rewording to acceptable ID Manual terms (you can narrow, never broaden) |
| Disclaimer required | Usually just accepting the disclaimer of a generic word |
United States: final office actions
If the examiner is not persuaded you get a final office action. You can file a request for reconsideration, appeal to the Trademark Trial and Appeal Board, or both, within the same deadline.
A typical request on TrademarksHub
“A US apparel brand received a 2(d) refusal citing a similar name for shoes. They need an attorney to argue the difference and suggest narrower wording within three weeks.”
Illustrative example. On TrademarksHub requests are shown as “Private brand owner”, and only firms that cover the chosen countries can reply.