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What is a substantive trademark office action?

Written by Jan Buza

Co-founder of Trama

A substantive office action is one that raises issues with the mark itself rather than procedural or administrative matters. Substantive issues go to the registrability of the mark and require legal arguments; and sometimes evidence; to resolve.

The most common substantive grounds are likelihood of confusion with an earlier registered mark (Section 2(d) in the US) and mere descriptiveness (Section 2(e)(1) in the US). Other substantive grounds include scandalousness or immorality, deceptiveness, use of a flag or official emblem, and use of a living person's name or likeness without consent.

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