Written by Jan Buza
Co-founder of Trama
A substantive office action is one in which the USPTO's examiner raises concerns that go beyond mere formalities with the application. It indicates that there are significant concerns that need to be addressed before your trademark can be approved for registration. The issues are usually more complex, and the responses require more time and effort to prepare.
The most common reasons for issuing a substantive office action are based either on Section 2(d) of the Trademark Act, which concerns the likelihood of confusion with other marks, or Section 2(e), which concerns the descriptiveness or genericness of the mark.
Responding to a substantive trademark office action typically requires providing legal arguments and evidence. It may also involve amending the application. It's advisable to consult with a qualified trademark attorney to effectively respond to a substantive office action and increase your chances of successfully registering your trademark.
As a foreigner, do I need trademark registration to sell products in the US?
If I register a logo trademark, will my brand name be protected as well?
Does the upper case/lower case presentation matter when registering a trademark?
After I file a trademark application, would adding a logo have any additional charges?
If I file my trademark on an intent-to-use basis, can I provide the specimen later?
Which option is most suited for my online business - word or logo trademark?
Can I amend the goods and services listed in my application in response to an office action?
What are the potential costs associated with responding to an office action?
Can I register a trademark if my company is not yet in business?
Our team of experienced trademark attorneys is here to help you! Simply send us an email outlining your request and we'll be happy to assist you.
