If you are an Australian business owner looking to expand into the United States, acquiring trade mark protection in the US is a great way to protect your growing brand. You can apply to register your marks in the US through the US government directly or via the Madrid Protocol, which regulates trade marks internationally.

No matter who you apply with, your application will eventually go through the United States Patent and Trademark Office (USPTO) for review. However, after the USPTO has examined your trade mark application, you may receive an “office action”. An office action is a letter that requests you to address certain issues associated with your application. This article will explain what to do if you receive a USPTO office action, so you have the best chance of achieving trade mark registration in the US.

How Do I Apply For US Trade Mark Protection?

There are two ways that your business can apply for trade mark protection in the US. This is through:

  • the Madrid Protocol; or
  • directly to the USPTO.

Madrid Protocol

The Madrid Protocol is a treaty where trade mark owners may be able to obtain registration for their mark internationally. Under the treaty, trade mark owners who live in one of the 119 member countries of the Protocol (which includes the US) can seek for their trade mark protection to apply to one or more of the other member countries. 

Applying to have your Australian trade mark registered internationally through the Madrid System is a convenient and cost-effective process. You can file a single application and choose as many countries as are appropriate for your business plan: the application is not limited to the US.


Applying directly to the USPTO for your trade mark can be done either yourself or by a lawyer qualified in the US. If you are using your local lawyer, it is likely that they will engage a US qualified lawyer on your behalf.

Unlike the Madrid Protocol application, an application with USPTO must specify your “basis” for filing. This basis may be your:

  • current use of the trade mark in the US; or
  • intent to use the trade mark in the future in the US.

You can file your trademark application online to the USPTO using the Trademark Electronic Application System (TEAS). This application will ask you to detail:

  • who the owner of your trade mark is; and
  • what goods or services your trade mark will be concerning.

US trade mark examiners require applicants to provide very specific descriptions of the goods and services that you are seeking to protect. Accordingly, you may want to seek advice from a US intellectual property (IP) lawyer on the best way to draft your application.

Office Actions

A USPTO will begin examining your trade mark application three months after it has been filed. If they reject your application, the examining attorney may issue an office action letter. This letter will communicate the denial of your application and explain the reasons for refusing your registration. However, the office action may also seek clarifications or request additional requirements that you will need to meet to achieve trade mark registration. Generally, you must submit a response to an office action within six months of the issue date. Otherwise, your trade mark application is likely to be disqualified.

There are two types of office actions:

  • non-final actions; and
  • final actions.

A non-final action addresses an issue for the first time. In comparison, a final action communicates that your response to a previous office action has failed.

In the US, trade marks may be rejected, and office actions may be issued, because of three main reasons.

1. Likelihood of Confusion with Other Marks

The USPTO may determine that there will be a “likelihood of confusion” between your mark and marks that have already been registered or filed when:

  1. the marks are similar; and
  2. there is a similarity in the goods or services of both marks that could lead consumers to believe that they came from the same business.

For example, if the name of your upcoming fashion brand is similar to that of a chemical supply company, it is unlikely that the USPTO will reject your trade mark for the “likelihood of confusion”.

Therefore, to respond to a “likelihood of confusion” refusal you can:

  • make submissions or an argument to the examiner;
  • seek consent to co-exist with the owner of the conflicting mark; or
  • narrow the field of your goods or services.

2. Your Mark is Too Descriptive

The USPTO considers trade marks as legally strong or weak.

Strong marks are unlikely to be similarly confusing to pre-existing marks. This helps to prevent third-party use. They are fanciful, arbitrary or suggestive.

Weak marks are likely to be similar to ones already used by others. This makes them difficult to police or enforce. They are too descriptive or generic.

Therefore, to respond to a “descriptiveness” refusal you can:

  • make submissions or an argument to the examiner;
  • claim that your mark has acquired distinctiveness within the marketplace from its regular use by consumers;
  • narrow the field of your goods or services; or
  • amend your application from the Principal Register to the Supplemental Register.

The Supplemental Register is a second trade mark register where marks that are not eligible for the Principal Register can be registered. Similarly to the Principal Register, marks on the Supplemental Register are protected against conflicting marks that are filed in the future. However, they do not receive the legal advantages that those on the Principal Register have.

3. Formality Issues

Formality issues are common for marks that are submitted through the Madrid Protocol in the US. During the application process, key elements often aren’t addressed. 

Therefore, you may be asked to:

  • clarify the form of your business entity;
  • narrow the goods or services you have claimed;
  • clarify the colour of your mark; or
  • add a disclaimer to your mark.

Key Takeaways

US trade mark applications are often problematic and require assistance by a qualified US trade mark lawyer. If you have received an office action, your mark may have been rejected if:

  • it is likely to be confused with other marks;
  • it is legally weak; or
  • there are formality issues.

If you have received an office action from the USPTO and have any legal questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Sophie Glover

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