What is a non-substantive trademark Office Action?

Non-substantive trademark Office Actions are letters issued by USPTO examining attorneys that do not necessarily refuse registration of the mark. Such Office Actions typically do not require significant legal research or argument. For example, any of the following reasons may lead to a non-substantive Office Action (what I call “non-refusal Office Action”):

  • proposed amendment to the identification of goods/services or the classification
  • request for more information on the mark (e.g., whether mark has a meaning in the industry or foreign language)
  • proposed revision to the description of a stylized special form mark
  • requested disclaimer of a portion of the trademark

Non-substantive Office Actions generally cover formalities that may be resolved quickly and inexpensively. Depending upon the issues raised in a non-substantive Office Action, our firm charges minor attorney fees for responding to non-refusal Office Actions.

What is a substantive trademark Office Action?

Substantive trademark Office Actions typically include a refusal to register the trademark based on certain grounds. Two of the most common grounds for refusing registration include likelihood of confusion and mere descriptiveness.

Likelihood of confusion basically means that the trademark examiner thinks your mark is confusingly similar to a registered mark. “Confusingly similar” does not necessarily mean identical. Instead, a confusingly similar mark means it is likely that a consumer may be confused as to the source, namely, that your products or services may originate from the same source as the goods/services of the owner of a prior registration. A trademark knockout search prior to filing a trademark application can reduce the risk of a rejection based on likelihood of confusion.

A trademark refused on the basis of mere descriptiveness means that the examiner believes the mark immediately conveys knowledge of a quality, feature, function or characteristic of an applicant’s goods or services. An experienced trademark attorney should be able to advise you on the risks of a potentially descriptive mark before applying.

Furthermore, an Office Action that raises issues requiring greater effort in response may also be substantive. For example, the applicant may disagree with a disclaimer required by the examining attorney.

As a further example, the examining attorney may be offering registration on the Supplemental Register which may require a Statement of Use.

Responses to substantive Office Action generally require greater effort and cost than those of non-substantive Office Action responses.

What is the cost of responding to a substantive trademark Office Action?

If the Office Action is substantive, our firm’s charges for a response ranges from $1,000 to $3,000 depending upon the nature of the rejection(s). If likelihood of confusion is cited with a number of registrations and/or prior-pending applications, the cost can increase proportionally in relation to the number of trademark filings which have to be argued against.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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