Office action guides

Refusal guides for the letter in your hand

Every guide here is written for someone who has already received a real USPTO notice: what the refusal means, what the examining attorney is actually weighing, and what you can do about it before your response window closes.

Every guide is built the same way, so once you have read one you know where to look in the next: why the refusal was issued, what the examiner weighs, what to do and what to avoid, the options you actually have, and the questions people ask once they understand it.

Section 2(d) Likelihood of Confusion Refusal

The examiner believes your mark is too close to one already on the register, used on related goods. The most common substantive refusal there is.

Read the guide 3 questions answered

What this guide answers

  • Which of the eight factors the examiner is actually weighing
  • Why “my logo looks different” is not the argument
  • When narrowing the goods description settles it
  • What a consent agreement is, and when the cited owner signs one
  • What happens if the examiner maintains the refusal

Section 2(e)(1) Merely Descriptive Refusal

The examiner believes your mark only describes what you sell, rather than identifying who sells it.

Read the guide 5 questions answered

What this guide answers

  • Where your mark sits on the generic-to-fanciful spectrum
  • The line between descriptive and suggestive, which decides the case
  • What acquired distinctiveness under 2(f) actually requires
  • What the Supplemental Register gives you, and what it costs you
  • When disclaiming one word ends the whole refusal

Specimen Refusal

The examiner does not accept your proof that the mark is genuinely in use. Usually fixable without changing your brand at all.

Read the guide 5 questions answered

What this guide answers

  • Which specimens are accepted for goods, and which for services
  • Why a mockup is a false claim of use, not just a weak specimen
  • What a webpage specimen has to show to be accepted
  • How to substitute a specimen without backdating your claim
  • When switching to intent-to-use beats defending the filing

Section 2(e)(4) Primarily Merely a Surname Refusal

The examiner believes your mark would be read first as somebody's family name rather than as the name of a business.

Read the guide 5 questions answered

What this guide answers

  • The five questions an examiner actually asks before refusing a surname
  • Why a rare surname is not automatically a registrable one
  • When doubt is resolved in your favour, and how to create it
  • What a Section 2(f) claim requires when the name is your own
  • Why the Supplemental Register is often the right answer for a family name

Disclaimer Requirement in a USPTO Office Action

The examiner is asking you to state that you claim no exclusive rights to a descriptive or generic part of your mark.

Read the guide 6 questions answered

What this guide answers

  • What a disclaimer is, and why it does not change how your mark looks
  • The kinds of wording and designs the USPTO asks applicants to disclaim
  • The exact statement format the USPTO prefers
  • How misspelled, compound, foreign and unitary wording is handled
  • Which form to use to answer in a non-final versus a final action

Not sure which one you have?

Your letter has a status code on it

The code at the top of a USPTO notice tells you where your application actually stands and whether a clock is already running. Twelve of them are explained in plain English.

Look up your status code

Elsewhere on the site

These guides are general information, not legal advice, and reading them does not create an attorney-client relationship. Only the response date printed on your own office action is authoritative.

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