Response to Office Action — Template

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This template supplies a complete, filable response to a non-final USPTO trademark office action, drafted as the captioned instrument an examining attorney actually reads, with every variable bracketed and every section explained. It opens with the triage that comes before drafting — which office actions this document fits, which ones call for a request for reconsideration, a statement of use filing, a petition to revive, or nothing at all — and then lists the serial numbers, dates, TSDR printouts, declarations, and exhibits you need in hand before the first sentence. The model response addresses a Section 2(d) likelihood-of-confusion refusal under the DuPont factors, a Section 2(e)(1) descriptiveness refusal with Section 2(f) and Supplemental Register fallbacks, a specimen refusal cured by substitute specimen and declaration, and the ordinary requirements — identification amendments, disclaimers, mark descriptions, and requests for information under 37 C.F.R. § 2.61(b). Clause-by-clause notes explain what each section does, the authority behind its wording, and what changes when the facts change. Alternative clauses cover the aggressive record attack, the conciliatory amendment, the consent agreement, the suspension request, and the version for an intent-to-use or Section 66(a) file. Filing mechanics cover the three-month clock under 37 C.F.R. § 2.62(a), the $125 extension, signature and exhibit hygiene, and everything that goes on the docket the day the response transmits.

IP and Technology > Trademarks | Form | Published 15 January 2026 - Updated 24 February 2026 | Casey Scott McKay - marksy.us

Summary. A complete, filable response to a non-final USPTO office action, with placeholders for your arguments and evidence and the reasoning behind every paragraph. Start with triage: which actions this document fits, and which ones need a different instrument entirely. Then the intake list — serial number, filing basis, issue date, deadline math, TSDR printouts, declarations, exhibits. Then the model response itself, captioned and organized the way an examining attorney reads it: a summary of what changed, the amendments entered, then the refusals answered one at a time under 15 U.S.C. § 1052(d) and § 1052(e)(1), a substitute specimen with its declaration, and the requirements complied with. Then clause-by-clause notes tying each section to authority. Then alternatives: the record attack, the concession, the consent agreement, the suspension request, the intent-to-use and Section 66(a) variants. Then filing mechanics, the $125 extension, and what goes on the docket the moment the response transmits.

Keywords: office action response template · trademark electronic filing · 37 cfr 2.62 three month deadline · section 2(d) refusal response · dupont factors argument · mere descriptiveness 2(e)(1) · section 2(f) in the alternative · supplemental register amendment · substitute specimen declaration · disclaimer language · identification amendment · request for information 2.61(b) · consent agreement · request for reconsideration · notice of appeal · trademark center exhibits · examining attorney interview · petition to revive · section 66(a) provisional refusal · evidence of record

What this template is, when to use it, and when not to

This is a substantive response to a non-final office action in a pending U.S. trademark application — the paper you file when an examining attorney has refused registration and you intend to argue rather than surrender. It is a starting template with placeholders for your arguments and your evidence, and it is deliberately over-built: the model contains more sections than any single response will need, so that you can delete the ones your office action does not raise rather than invent the ones it does.

An office action is not a decision. It is an opening position by a lawyer who spent perhaps ninety minutes with your file, working from a database search and the TMEP. Roughly two-thirds of applications draw one. Most are answerable. The instrument below is how you answer.

The strategy behind the arguments — which refusals are winnable, which evidence moves an examiner, and what the win rates actually look like — lives in the Office Action Response Toolkit and, for the statutory bars specifically, in the Section 2 Refusal Response Checklist. This document is the paper. Read those first if you have not yet decided what to argue; read this one when you know.

Use this template when the action is a first (non-final) action in a § 1(a), § 1(b), or § 44 application, it contains at least one substantive refusal you intend to contest, and you are within the response period.

Do not use it — use something else — when:

| Situation | Why this document is the wrong instrument | Instead | |---|---|---| | The action is final | A response to a final action is either a request for reconsideration under 37 C.F.R. § 2.63(b)(3) or a notice of appeal — different caption, different strategy, and the appeal clock does not pause | Taking an Ex Parte Appeal and the Ex Parte Appeal Checklist | | The action raises only ministerial requirements — a disclaimer, an entity correction, a translation | The Trademark Center form fields handle these directly. A brief adds cost and delay and nothing else | Comply in the form; see the Office Action Response Checklist | | The application already went abandoned | Nothing to respond to. You have two months from the issue date of the notice of abandonment | Petition to revive, 37 C.F.R. § 2.66; then Docketing Deadlines so it does not recur | | The action concerns a statement of use or an extension request | The defect is usually a specimen or date problem in the allegation of use, not a registrability refusal | From Notice of Allowance to Registration, the Statement of Use Filing Checklist, and the Request for Extension of Time to File a Statement of Use — Template | | The action is post-registration, on a § 8 or § 9 filing or a proof-of-use audit | Different filing, different form, and the fix is usually specimens for audited goods | Filing a Section 8 Declaration of Continued Use and the Section 8 Declaration — Template | | The refusal is a WIPO provisional refusal on a § 66(a) extension of protection | The response period is six months with no extension, the Supplemental Register is unavailable under 37 C.F.R. § 2.47(c), and the identification cannot be broadened | WIPO Office Actions and Provisional Refusals | | The only sensible move is to abandon and refile | Some refusals — a truly generic term, a functional product design, an unlawful-use bar — are not argued away. Paying for a brief is paying for a slower no | Choosing a Strong Trademark and Running a Full Trademark Clearance Search |

What an examiner cannot refuse on. Dilution is not an ex parte ground. An examining attorney has no authority to refuse under 15 U.S.C. § 1125(c); fame arguments belong to an opposer, not an examiner. If the action reads like a dilution refusal, it is really a § 2(d) refusal in costume — answer it as one, and save the fame analysis for the Trademark Dilution Claim Checklist if the registrant later opposes. The same is true of abandonment: you cannot collaterally attack a cited registration in an office action, no matter how obviously dead the registrant's mark is. That fight goes to the Board, on the record described in the Trademark Abandonment Evidence Checklist.

The worked example. Tallgrass Provisions Co., a Lawrence, Kansas maker of small-batch hot sauce and spice blends, filed Serial No. 98/412,905 for PRAIRIE EMBER in standard characters, Class 30, under § 1(a), claiming first use 14 March 2023. On 6 February 2026 Examining Attorney D. Whitlock in Law Office 118 issued a four-part action: (1) a § 2(d) refusal citing U.S. Reg. No. 5,930,447 for EMBER and design, covering "barbecue grills; charcoal smokers" in Class 11; (2) a specimen refusal, because the submitted image was a bottle mockup rather than a photograph of goods in commerce; (3) a requirement to amend "spice blends" as indefinite; and (4) a request for information under 37 C.F.R. § 2.61(b) asking whether the goods contain hemp-derived ingredients. Three of the four are answerable in a paragraph each. The § 2(d) refusal is the document.

Before you start: what you need in hand

Do not draft until this list is complete. The single most expensive error in office action practice is a response filed on time and short one exhibit.

The file.

The evidence.

The authority.

The model response

Everything in [BRACKETS AND CAPITALS] is a fill-in. Everything in [brackets and lowercase] is optional or an alternative — delete what your action does not raise. This text is drafted to be pasted into the argument field of the Trademark Center response form, or attached to it as a PDF, with exhibits uploaded separately.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE EXAMINING ATTORNEY

| | | |---|---| | Applicant: | [APPLICANT LEGAL NAME] | | Mark: | [MARK AS SHOWN IN THE DRAWING] | | Serial No.: | [NN/NNN,NNN] | | Filing Date: | [DATE] | | Filing Basis: | [Section 1(a) / 1(b) / 44(e) / 66(a)] | | International Class(es): | [NN] | | Examining Attorney: | [NAME], Law Office [NNN] | | Office Action Issued: | [DATE] | | Response Due: | [DATE] |

RESPONSE TO OFFICE ACTION DATED [DATE]

I. Introduction and Summary of Response

Applicant respectfully responds to the Office Action issued [DATE], in which the Examining Attorney [refused registration under Section [2(d) / 2(e)(1)] of the Trademark Act, 15 U.S.C. § [1052(d) / 1052(e)(1)]] [, refused registration on the ground that the specimen does not show the applied-for mark in use in commerce,] and [required [AMENDMENT / DISCLAIMER / INFORMATION]].

By this Response, Applicant: (1) [amends the identification of goods and services as set forth in Part II]; (2) [submits a substitute specimen and supporting declaration]; (3) [complies with the requirement for [INFORMATION / A DISCLAIMER / A DESCRIPTION OF THE MARK]]; and (4) traverses the refusal[s] for the reasons set out below. Applicant respectfully submits that the application is now in condition for [publication / issuance of a notice of allowance] and requests that the refusal[s] be withdrawn.

II. Amendments Entered by This Response

Applicant amends the identification of goods in International Class [NN] to read as follows, with additions underlined and deletions in brackets:

[FULL AMENDED IDENTIFICATION, VERBATIM]

This amendment [clarifies the nature of the goods consistent with the USPTO Acceptable Identification of Goods and Services Manual] [and limits the goods to [FIELD / TRADE CHANNEL / PURCHASER CLASS], which removes the overlap on which the refusal rests]. The amendment is within the scope of the goods as originally identified and does not broaden the application. 37 C.F.R. § 2.71(a).

[Applicant further amends the description of the mark to read: "[DESCRIPTION]."] [Applicant enters the following disclaimer: "No claim is made to the exclusive right to use "[TERM]" apart from the mark as shown."] [Applicant corrects its entity type from [X] to [Y]. This correction does not change the identity of the applicant.]

III. The Refusal Under Section 2(d) Should Be Withdrawn

The Examining Attorney refused registration under 15 U.S.C. § 1052(d) based on U.S. Registration No. [NUMBER] for [CITED MARK], covering [CITED GOODS/SERVICES] (the "Cited Registration"). Confusion is not likely. The relevant factors are those set out in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), only those for which evidence appears in the record need be considered, and the factors on this record weigh against confusion.

A. The marks differ in appearance, sound, connotation, and commercial impression.

Applicant's mark is [APPLICANT'S MARK]; the cited mark is [CITED MARK]. [Applicant's mark contains the additional term [TERM], which is [the first and dominant element / a distinctive term with no counterpart in the cited mark].] Marks are compared in their entireties, In re National Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985), and the first term of a mark is generally the portion consumers notice and remember, Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondée En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005).

More importantly, the marks convey different meanings. [APPLICANT'S MARK] connotes [MEANING], while [CITED MARK] connotes [MEANING]. Dictionary evidence establishing these meanings is attached as Exhibit [A]. A difference in connotation alone can be dispositive. See In re Sears, Roebuck & Co., 2 U.S.P.Q.2d 1312, 1314 (T.T.A.B. 1987).

B. The goods and services are not related as identified.

The Cited Registration covers [CITED GOODS]. Applicant's goods, as amended, are [APPLICANT'S GOODS]. These are [different products serving different functions, purchased at different times for different purposes]. Relatedness must be established by evidence, not assumption; a refusal cannot rest on the examining attorney's intuition that two categories might be sold near one another. In re St. Helena Hospital, 774 F.3d 747, 752-54 (Fed. Cir. 2014). Where the goods are complementary rather than substitutable, "something more" than a general relationship is required. In re Coors Brewing Co., 343 F.3d 1340, 1345-46 (Fed. Cir. 2003).

The [NUMBER] third-party registrations cited in the Office Action [do not show a single entity offering both categories under one mark / cover only [NARROW OVERLAP]]. Exhibit [B] collects [NUMBER] third-party registrations in which [CATEGORY 1] and [CATEGORY 2] are separately owned, which cuts directly against the inference the Office Action draws.

C. The cited mark is weak and entitled to a narrow scope of protection.

[TERM] is [descriptive of / highly suggestive of / laudatory as applied to] the goods in both the Cited Registration and this application. Exhibit [C] collects [NUMBER] active third-party registrations for marks containing [TERM] for [RELATED GOODS], and Exhibit [D] collects screenshots showing [NUMBER] of those marks in current marketplace use. Extensive third-party use and registration of a term shows that consumers distinguish among such marks on small differences, and narrows the scope of protection accordingly. Juice Generation, 794 F.3d at 1338-39; Jack Wolfskin, 797 F.3d at 1373-74.

D. The purchasers are sophisticated and the goods are not impulse purchases.

Applicant's goods are sold at [PRICE POINT] to [PURCHASER DESCRIPTION], who [purchase after evaluation / buy through specification-driven procurement]. The declaration of [NAME], attached as Exhibit [E], describes the purchasing process. [Applicant acknowledges that the analysis is governed by the least sophisticated relevant purchaser, Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014), and the amended identification limits the goods to [CHANNEL], which excludes casual purchasers.]

E. The marks have coexisted without actual confusion.

Applicant has used [APPLICANT'S MARK] continuously since [DATE], concurrently with the registrant's use, for [NUMBER] years. During that period Applicant has [sold $[AMOUNT] of goods / served [NUMBER] customers] and is aware of no instance of actual confusion. The declaration of [NAME] at Exhibit [F] so states. Evidence of substantial concurrent use without confusion is probative under the seventh and eighth DuPont factors and must be considered where it is of record. In re Guild Mortgage Co., 912 F.3d 1376, 1380-81 (Fed. Cir. 2019).

[F. Applicant owns a prior registration for a substantially identical mark. Applicant owns U.S. Reg. No. [NUMBER] for [MARK] covering [GOODS], which has coexisted with the Cited Registration since [DATE]. That coexistence is a relevant consideration under the thirteenth DuPont factor. In re Strategic Partners, Inc., 102 U.S.P.Q.2d 1397, 1399-1400 (T.T.A.B. 2012).]

IV. The Refusal Under Section 2(e)(1) Should Be Withdrawn

A. The mark is suggestive, not merely descriptive.

A mark is merely descriptive only if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012); In re Abcor Development Corp., 588 F.2d 811, 814 (C.C.P.A. 1978). [APPLICANT'S MARK] does not. A consumer encountering [MARK] on [GOODS] must take [DESCRIBE THE MENTAL STEPS] before arriving at any characteristic of the goods. That multistage reasoning is the definition of suggestiveness. [The mark is also a double entendre: [EXPLAIN THE SECOND MEANING], attested by Exhibit [G].]

The Examining Attorney's evidence consists of [DESCRIBE]. That evidence [uses the term to describe a different product / shows the term used as a mark rather than descriptively / postdates Applicant's filing date]. Doubt on descriptiveness is resolved in the applicant's favor and the mark is published for opposition. See TMEP § 1209.01(a).

B. In the alternative, the mark has acquired distinctiveness under Section 2(f).

Without conceding that the mark is descriptive, and in the alternative, Applicant claims acquired distinctiveness under 15 U.S.C. § 1052(f). Applicant has used the mark in commerce continuously for [NUMBER] years, has spent $[AMOUNT] promoting it, has sold $[AMOUNT] of goods under it, and has received unsolicited media coverage attached as Exhibit [H]. The declaration of [NAME] at Exhibit [I] supports these figures. The burden is Applicant's, by a preponderance, Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576-77 (Fed. Cir. 1988), and the quantum required is proportional to the descriptiveness of the term, In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005). Applicant's showing satisfies it. [Applicant claims acquired distinctiveness as to "[PORTION]" only. In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1335-36 (Fed. Cir. 2015).]

C. In the further alternative, Applicant requests amendment to the Supplemental Register.

If the refusal is maintained and the Section 2(f) showing is found insufficient, Applicant requests in the alternative that the application be amended to the Supplemental Register under 15 U.S.C. § 1091.

V. The Specimen Refusal Is Overcome by the Substitute Specimen Submitted Herewith

Applicant submits a substitute specimen showing [DESCRIBE: THE MARK ON PRODUCT PACKAGING / A POINT-OF-SALE WEBPAGE WITH ORDERING INFORMATION], attached as Exhibit [J]. The substitute specimen shows the mark as it appears in the drawing, in use in commerce for the identified goods, and it was in use in commerce as of [the application filing date / the date of the allegation of use]. Applicant submits the declaration required by 37 C.F.R. §§ 2.20 and 2.56(a) with this Response.

[The webpage specimen shows the mark in proximity to a picture of the goods together with [a price, an "add to cart" control, and shipping information], and therefore functions as a display associated with the goods at the point of sale. In re Siny Corp., 920 F.3d 1331, 1336 (Fed. Cir. 2019); TMEP § 904.03(i).]

VI. Response to the Examining Attorney's Requirements

[Request for information. In response to the Examining Attorney's request under 37 C.F.R. § 2.61(b), Applicant states: [ANSWER EACH NUMBERED QUESTION SEPARATELY AND COMPLETELY].]

[Disclaimer. Applicant enters the disclaimer set out in Part II without conceding that the disclaimed matter is unregistrable.]

[Translation. The English translation of "[FOREIGN WORD]" in the mark is "[TRANSLATION]."]

[Consent. The name "[NAME]" in the mark identifies [a living individual whose written consent is attached as Exhibit [K] / no living individual].]

VII. Evidence Submitted With This Response

| Exhibit | Description | Pages | |---|---|---| | A | [DESCRIPTION] | [N] | | B | [DESCRIPTION] | [N] | | C | [DESCRIPTION] | [N] |

VIII. Conclusion

For the reasons stated, Applicant respectfully requests that the Examining Attorney withdraw the refusal[s], accept the amendments and the substitute specimen submitted herewith, and pass the application to [publication / issuance of a notice of allowance]. If any issue remains that the Examining Attorney believes can be resolved by amendment or by telephone or email, Applicant's undersigned counsel invites the Examining Attorney to make contact at the number below before issuing a further action.

Respectfully submitted,

[ATTORNEY NAME] [FIRM NAME] [ADDRESS] [PHONE] | [EMAIL] [STATE BAR NUMBER AND STATE] Attorney for Applicant Dated: [DATE]

Clause-by-clause drafting notes

The caption block (unnumbered). Trademark Center captures most of this metadata automatically, which is exactly why people leave it off the brief. Put it on anyway. Attachments get separated from files; the examining attorney reads a dozen responses a day; and if this document is ever an exhibit to an appeal brief, the caption is what makes it self-identifying. Include the response due date — it signals that you calendared it, and it catches your own arithmetic error while there is still time.

Part I — Introduction and summary. This paragraph exists so the examining attorney can tell, in fifteen seconds, which items are contested and which are resolved. Examiners triage. A response that opens with three pages of DuPont argument buries the fact that you already fixed the identification, and buried compliance sometimes reads as no compliance. List what you did, then argue. Never say "Applicant respectfully disagrees" and stop there; the response must address every item, and 37 C.F.R. § 2.65(a) turns a partial response into an abandonment risk.

Part II — Amendments. Amendments go before argument because they change the premises the argument runs on. A § 2(d) argument built on an amended identification is incoherent if the examiner reads the argument first. Show additions and deletions explicitly. The scope limit in 37 C.F.R. § 2.71(a) is hard: you may narrow, clarify, or delete, never broaden. Draft the amended wording from the USPTO's ID Manual where you can, because manual-conforming language is accepted without a second look — the mechanics are in Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist. Remember what you are giving up: narrowing to defeat a refusal narrows your registration forever, and a registration is only as broad as the goods it covers. See The Nice Classification System.

Part III — The § 2(d) argument. Organize it by the DuPont factors that have evidence, not by all thirteen. An examining attorney is required to consider only the factors for which the record contains evidence, and a response that recites factors with nothing behind them signals that the winning ones are thin. The doctrine, the case law, and the argument sequencing are treated at length in Responding to a §2(d) Likelihood-of-Confusion Refusal and, from the litigation side, in Trademark Infringement: Proving Likelihood of Confusion.

Two structural points. First, lead with your strongest factor, not with subsection A. If the goods are plainly unrelated and the marks are close, argue relatedness first and treat similarity defensively. Second, do not fight a fight you cannot win. Conceding that two marks share a term, then explaining why the shared term is weak, is far more persuasive than insisting that PRAIRIE EMBER and EMBER look nothing alike. Examining attorneys can read.

Subsection C is where most responses are won. A crowded field converts a strong-looking citation into a weak one, and the Federal Circuit has twice reversed the Board for undervaluing third-party evidence. But the evidence must be of record and it must be current: dead registrations prove nothing, and a printout without a date is worth less than one with a date. Pull TSDR status for each.

Part IV — The § 2(e)(1) argument, and its two exits. The suggestiveness argument and the § 2(f) claim are in genuine tension — one says the mark is inherently distinctive, the other concedes it needs to acquire distinctiveness — which is why the alternative pleading language matters. "Without conceding that the mark is descriptive, and in the alternative" is not throat-clearing; it preserves the primary argument for appeal while giving the examiner a path to allowance. TMEP § 1212.02(c) expressly permits the alternative claim.

The Supplemental Register request is the third exit, and it has gates. A § 1(b) application cannot go to the Supplemental Register until an acceptable amendment to allege use is filed, 37 C.F.R. § 2.47(d); a § 66(a) application cannot go there at all, 37 C.F.R. § 2.47(c). A Supplemental registration gets you the registration symbol, a bar to later confusingly similar applications, and federal court jurisdiction — but no presumption of validity and no incontestability. It is a real asset and a common landing place. The full treatment is in How to Overcome a Descriptiveness §2(e)(1) Refusal and From Descriptive to Distinctive.

If the refusal is genericness rather than descriptiveness, none of this applies — there is no § 2(f) exit and no Supplemental Register for a generic term. Build the primary-significance record described in the Genericness Defense and Prevention Checklist, and read Genericide for how terms get there.

Part V — Specimens. A substitute specimen usually beats an argument. The declaration is not optional: 37 C.F.R. § 2.56 and TMEP § 904.05 require verification that the substitute was in use in commerce at or before the relevant date, and an unverified substitute draws a second action. The date matters more than practitioners expect — a specimen created last week does not support a first-use date from 2023. Diagnosis of the underlying problem, including ornamentation and failure-to-function refusals, is in Specimen Refusals: Why the USPTO Rejected Your Proof of Use.

Trap. Do not backdate, and do not let a client "recreate" a label. A false verification is the fact pattern that produces a fraud allegation in a later cancellation. The intent standard is high — In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009), requires intent to deceive — but "we lost the original so we made a new one" is exactly the testimony that gets you there. See Fraud on the Trademark Office.

Part VI — Requirements. Answer a 37 C.F.R. § 2.61(b) request for information completely and question by question. An incomplete or evasive answer is itself an independent ground for refusal, and the Board sustains those refusals routinely. If the questions concern regulated ingredients — hemp, CBD, kratom, nicotine, alcohol, firearms, supplements — the answer determines whether the application survives at all under the lawful-use requirement. Do not improvise it. See The Lawful Use Requirement and the Regulated-Industry Trademark Filing Checklist. In the Tallgrass example, the honest answer — that one sauce contains hemp seed oil, an ingredient generally recognized as safe and not a controlled substance — resolves the inquiry in three sentences. A vague answer would have produced a Controlled Substances Act refusal and six more months.

Part VII — The exhibit index. Examining attorneys lose attachments. Name each file with the serial number and the exhibit letter (98412905_Exhibit_C_third_party_regs.pdf), keep each under the size limit, and index them in the brief so that a missing file is visible on the face of the response rather than discovered in the next action.

Part VIII — The conclusion and the invitation. The last sentence is the most undervalued line in the document. Examining attorneys can issue an examiner's amendment or a priority action by telephone or email, and many will if you make it easy. A response that ends with a phone number and an explicit invitation converts a meaningful share of second actions into a five-minute call. If the call happens, confirm the substance in writing — the examiner must enter a note to the file, but your own confirming email is what you will want later.

Alternative and optional clauses

The record attack (aggressive version). Use when the examiner's evidence is genuinely thin — three Google hits and a Wikipedia page. Insert after Part III.B:

The Examining Attorney bears the initial burden of establishing a prima facie case. The evidence of record consists of [DESCRIBE], which [does not show any single source offering both categories / consists entirely of listings postdating Applicant's filing date / shows the term used descriptively rather than as an indicator of source]. On this record the refusal cannot be sustained, and Applicant requests that it be withdrawn or, in the alternative, that the Examining Attorney identify the specific evidence relied upon so that Applicant may address it.

This is the right tone when you expect to appeal and want the deficiency visible in the record before 37 C.F.R. § 2.142(d) closes it. It is the wrong tone when you need the examiner's goodwill on a discretionary amendment.

The concession (conciliatory version). Use when the refusal is largely correct and the objective is a narrower registration rather than none:

Solely to advance prosecution and without conceding the merits of the refusal, Applicant amends the identification to delete "[GOODS]" and to limit the remaining goods to "[NARROWED WORDING]." As amended, the identified goods do not overlap with the goods of the Cited Registration in kind, channel, or purchaser, and the basis for the refusal is removed.

Consent agreement. The most reliable way to defeat a § 2(d) refusal is a consent from the cited registrant, and a detailed consent — one reciting why the parties believe confusion is unlikely and what steps they will take if it occurs — carries far more weight than a bare "we consent." Insert:

Applicant submits herewith a consent agreement executed by [REGISTRANT], the owner of the Cited Registration, attached as Exhibit [L]. The agreement recites the parties' respective goods, channels of trade, and purchasers; states the parties' considered belief that confusion is not likely; and provides for cooperative measures should confusion arise. Consent agreements are entitled to substantial weight.

Draft the underlying agreement from the Trademark Coexistence Agreement — Template, and price in the risk before you ask: a consent request tells the registrant you exist. Weigh that against the Trademark Transactions Toolkit before the first call.

Suspension pending a cancellation. You cannot attack the cited registration in the response, but you can attack it at the Board and ask the examiner to wait:

Applicant has filed a petition to cancel Registration No. [NUMBER], Cancellation No. [NUMBER], on the ground of [abandonment / nonuse]. Applicant requests suspension of action on this application pending final disposition of that proceeding. 37 C.F.R. § 2.67; TMEP § 716.02(d).

Mechanics in Filing a Petition for Cancellation.

Intent-to-use variant. In a § 1(b) file, delete every reference to use, sales, and specimens from Parts III and V. You have no use evidence, which means the seventh and eighth DuPont factors are unavailable and a § 2(f) claim generally is too — unless you can rely on use of the same mark on related goods under TMEP § 1212.09. Background in Intent-to-Use Applications.

Section 66(a) variant. Six months, no extension, no Supplemental Register, and no broadening — plus the substantive response must be filed with the USPTO, not WIPO. See WIPO Office Actions and Provisional Refusals and, for portfolio context, The Madrid Protocol.

Non-traditional marks. Color, sound, product configuration, and motion marks draw refusals this template only gestures at — functionality, failure to function, and drawing and description requirements. Use the specialized sequence in Registering a Non-Traditional Mark and the Non-Traditional Trademark Application Checklist. If the refusal is functionality, understand before you draft that it is not curable by evidence of distinctiveness: Trade Dress and the Functionality Doctrine.

Surname, geographic, and deceptiveness refusals. Different evidence entirely — census data, gazetteers, goods/place association. See Overcoming a Section 2 Refusal and The Section 2 Bars. A quick vignette: Marlowe & Fen, LLC applied for DELACROIX for handbags and drew a § 2(e)(4) refusal. The answer was not argument about how the name sounds — it was census-frequency evidence, a showing that the surname has a recognized alternative significance, and a declaration that no one connected with the applicant bears the name.

Filing mechanics

Where it goes. Electronically, through the USPTO's Trademark Center response form, which replaced the legacy TEAS forms. Electronic filing is mandatory but for narrow exceptions. 37 C.F.R. § 2.23(a). Paste the brief into the argument field or attach it as a PDF; upload exhibits as separate, individually named files.

Who signs. The attorney of record, or the applicant if unrepresented and domestically domiciled. 37 C.F.R. §§ 2.193, 11.14(e). A foreign-domiciled applicant must have U.S. counsel. 37 C.F.R. § 2.11. A substitute specimen requires a verified statement under 37 C.F.R. § 2.20, signed by someone with firsthand knowledge — not by counsel reciting what the client said.

Fees.

| Item | Amount | Authority | |---|---|---| | Response to a non-final office action | No fee | — | | Extension of the response period, § 1 / § 44 | $125, per request, filed before the original date expires | 37 C.F.R. §§ 2.62(a)(2), 2.6(a)(28) | | Adding a class by amendment | Application filing fee for the added class | 37 C.F.R. § 2.6(a)(1) | | Petition to revive an abandoned application | Petition fee, within two months of the notice of abandonment | 37 C.F.R. § 2.66 | | Notice of appeal to the TTAB | Per class | 15 U.S.C. § 1070; 37 C.F.R. § 2.142(a) |

Proof of transmission. Save the Trademark Center confirmation email and the filing receipt with its date-stamp and every attachment listed. Then, twenty-four hours later, open TSDR and confirm the documents actually appear in the file wrapper. Confirmation emails have been generated for submissions whose attachments did not attach. The full sequence is in the Office Action Response Checklist.

What to calendar the day it transmits.

Common mistakes

Treating the deadline as six months. It is three for §§ 1 and 44 applications, extendable once by three for $125, and the extension must be requested before the original date passes. There is no grace period and no retroactive extension.

Answering the refusal and ignoring a requirement. A response that brilliantly defeats a § 2(d) refusal and says nothing about the disclaimer requirement is incomplete. Work from the ground inventory.

Arguing that the cited registration is invalid. The examining attorney cannot entertain it. Either live with the registration, get a consent, or petition to cancel and ask for suspension.

Filing a § 2(f) claim with conclusions instead of numbers. "The mark has become well known" proves nothing. Years, dollars, units, impressions, unsolicited coverage, and a declaration from someone who can be cross-examined about them.

Leaving the strongest evidence out of the record. Under 37 C.F.R. § 2.142(d) the record closes when the appeal is filed. Evidence that felt optional at the response stage is unavailable at the Board.

Submitting a specimen that does not match the drawing. The most common specimen refusal, and it recurs when the substitute has the same problem as the original.

Filing a live placeholder. A response that reaches the examining attorney with [APPLICANT'S MARK] in it is a permanent public record. Search the document for [ before you transmit.

Practice tip. Before you draft anything, call the examining attorney. The phone number is on the action. Ten minutes on the phone will tell you which refusal the examiner considers serious, whether an identification limitation would resolve the § 2(d) refusal, and whether the specimen problem is technical or substantive. It is the highest-return ten minutes in trademark prosecution, and roughly nobody spends it.

Two hard rules for this document. Keep every variable inside [SQUARE BRACKETS] until the moment you fill it, so an unfilled field is impossible to miss. And treat the model text as a starting point, not as advice: office action responses turn on the specific refusal, the specific record, and the specific mark, and a licensed attorney should review the response before it is filed.

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Across the Wider Corpus

The Marksy library now extends well beyond the register. These sit outside this document's immediate subject and bear on it directly — sector-specific brand practice, the adjacent federal regimes, and the disputes a trademark question runs into once it leaves the USPTO.

This document is general information about the law, not legal advice, and does not create an attorney-client relationship. Trademark and copyright outcomes turn on specific facts. Marksy is not a law firm.

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