The envelope (well, email) that scares every applicant: an office action is not a denial. It's the examining attorney's list of problems — and most have answers.
| Refusal | What it means | Typical answer |
|---|---|---|
| Likelihood of confusion (§2(d)) | Examiner found a similar registered mark | Argue differences in marks/goods/channels; sometimes consent agreements |
| Merely descriptive (§2(e)) | The mark describes the product ("COLD ICE CREAM") | Argue suggestiveness, show acquired distinctiveness, or amend registers |
| Specimen refusal | Your proof-of-use doesn't show the mark properly used | Substitute specimen — often the easiest fix |
| Identification issues | Goods/services wording is too vague or broad | Amend the identification — carefully, it can only narrow |
| Patent §102/§103 rejections | Examiner cites prior art against your claims | Claim amendments + technical argument — attorney territory |
The clock is the enemy. Trademark responses are due in 3 months (6 with a paid extension). Nothing about a strong response gets easier in month three — send it to counsel in week one.
Sometimes the right answer is a strategic pivot rather than an uphill argument — that's a cost/equity judgment an attorney can make quickly. Context on the underlying process: how trademark registration works and what the full path costs. Facing a deadline now? Get the office action in front of an attorney — reviews are free.
Describe your name, brand, or invention — hear back within one business day.
Not final — it's the examiner stating objections you're invited to overcome. Many registered trademarks and granted patents got at least one office action on the way.
Trademark office actions: 3 months, extendable to 6 for a fee. Miss it and the application is abandoned — revival is possible briefly, but expensive and not guaranteed.
Simple fixes (specimen, disclaimer) run $400–$800 with an attorney. Substantive refusals — likelihood of confusion, descriptiveness — run $1,000–$2,500+ because they're legal argument, not paperwork.
Usually not. Most refusals are answerable, and this is the single most common moment DIY filers hire counsel. Bring the office action to a consultation before the deadline eats your options.
Trademarking a name costs $350 per class in USPTO fees, with attorney-handled registrations totaling $950–$2,000 in 2026.
Read the guide →The real process for trademarking a name in 2026: clearance search, classes, filing basis, USPTO examination, publication, and registration — with timelines and pitfalls at each step..
Read the guide →Patents cost $1,500–$5,000 for a provisional and $8,000–$20,000+ for an attorney-drafted utility application in 2026.
Read the guide →