Research · USPTO · Examination
A third of trademark applicants who get an Office Action never answer it
We followed every U.S. trademark application filed between 2015 and 2019, all 2,204,883 of them, through its USPTO file history to whatever became of it. An Office Action turns out to be the normal case, and usually a survivable one. What sinks most of the applications that fail after one is not the refusal. It is that nobody answers it.
An Office Action is the normal case
58.4% of applications in the cohort received at least one non-final Office Action. If you got one, you are in the majority, and it is not a verdict. 54.2% of the applications that drew one still ended up registered, against 61.5% for the cohort as a whole. Fewer went all the way to a final refusal: 8.9% of all applications.
| What happened | Applications | Share |
|---|---|---|
| Filed 2015–2019 | 2,204,883 | 100% |
| Drew at least one Office Action | 1,288,020 | 58.4% |
| Reached a final refusal | 195,272 | 8.9% |
| Abandoned after an Office Action nobody answered | 447,676 | 20.3% |
| Registered in the end | 1,356,812 | 61.5% |
The response is where applications are lost
Of the 1,288,020 applications that drew an Office Action, 447,676 (34.8%) were abandoned by the USPTO for failure to respond, or for responding after the deadline. Of the 840,344 that were answered, 80.9% went on to register.
Split one group by one behaviour and the outcome separates almost completely. The refusal is rarely the problem. Walking away from it is. If an Office Action arrives, the deadline matters more than the objection.
Some of those unanswered applications were never meant to go further: a brand dropped, a business that did not launch, a filing made to see what would happen. The data cannot tell those apart from applicants who missed an email. It does show how often the easiest step, a reply, is the one that does not happen.
By class: where Office Actions go unanswered
The share left unanswered varies a lot by class. It is highest in Class 34 (Smokers Articles, 45.9%), Class 25 (Clothing, 42.0%), Class 33 (Wine & Spirits, 39.6%), and lowest in Class 17 (Rubber Goods, 19.5%), Class 7 (Machinery, 20.5%), Class 6 (Metal Goods, 21.5%). Classes where more applicants have an attorney on record tend to leave fewer Office Actions unanswered, but the link is loose: several of the worst classes have counsel on most filings, so representation alone does not explain the spread.
| Nice class | Left unanswered | Left unanswered | Office Action | Registered after answering | Registered | Median months |
|---|---|---|---|---|---|---|
| Class 34 Smokers Articles | 45.9% | 62.6% | 68.2% | 48.0% | 12 | |
| Class 25 Clothing | 42.0% | 57.9% | 78.4% | 54.6% | 11.9 | |
| Class 33 Wine & Spirits | 39.6% | 55.4% | 74.2% | 51.6% | 13.1 | |
| Class 32 Light Beverages | 39.3% | 56.8% | 73.1% | 53.7% | 13 | |
| Class 5 Pharmaceuticals | 36.5% | 57.1% | 72.6% | 50.6% | 12.8 | |
| Class 3 Cosmetics & Cleaning | 35.8% | 60.7% | 78.0% | 57.6% | 12.8 | |
| Class 43 Hotels & Restaurants | 35.2% | 58.9% | 78.5% | 59.8% | 12 | |
| Class 30 Staple Foods | 35.0% | 61.8% | 77.8% | 58.1% | 12.5 | |
| Class 13 Firearms | 34.8% | 54.9% | 83.1% | 64.7% | 12.2 | |
| Class 31 Natural Agricultural Products | 33.5% | 63.2% | 78.7% | 58.7% | 13.3 | |
| Class 44 Medical Services | 33.5% | 63.3% | 80.1% | 61.9% | 11.9 | |
| Class 14 Jewelry | 32.7% | 58.9% | 83.3% | 65.1% | 10.8 | |
| Class 15 Musical Instruments | 32.7% | 58.8% | 86.9% | 69.3% | 10.6 | |
| Class 26 Fancy Goods | 32.1% | 59.4% | 83.1% | 66.7% | 9.8 | |
| Class 29 Meats & Processed Foods | 31.2% | 63.1% | 75.9% | 57.1% | 13.3 | |
| Class 41 Education & Entertainment | 31.0% | 62.4% | 81.8% | 64.0% | 11.9 | |
| Class 35 Advertising & Business | 30.9% | 65.1% | 82.0% | 63.7% | 12.5 | |
| Class 36 Insurance & Financial | 30.7% | 61.2% | 81.2% | 64.5% | 12.2 | |
| Class 45 Legal & Security Services | 30.0% | 63.5% | 81.6% | 64.1% | 12.2 | |
| Class 28 Toys & Sporting Goods | 29.5% | 56.4% | 80.4% | 63.2% | 12.2 | |
| Class 20 Furniture | 28.7% | 61.2% | 82.7% | 65.3% | 12.4 | |
| Class 24 Fabrics | 28.7% | 59.6% | 80.9% | 64.6% | 11.9 | |
| Class 16 Paper Goods | 28.2% | 63.6% | 80.5% | 62.5% | 13.3 | |
| Class 18 Leather Goods | 27.7% | 60.2% | 80.8% | 64.8% | 12.1 | |
| Class 21 Housewares | 27.6% | 58.5% | 81.6% | 66.4% | 11.1 | |
| Class 9 Computers & Electronics | 27.3% | 63.7% | 80.3% | 63.5% | 13 | |
| Class 39 Transportation & Storage | 27.2% | 66.5% | 81.8% | 64.8% | 13.2 | |
| Class 4 Lubricants & Fuels | 27.1% | 62.2% | 80.6% | 63.6% | 13 | |
| Class 12 Vehicles | 27.1% | 64.6% | 83.7% | 66.0% | 12.8 | |
| Class 19 Building Materials | 27.1% | 67.8% | 85.3% | 66.9% | 13.8 | |
| Class 37 Building & Construction | 26.3% | 66.5% | 86.7% | 70.2% | 12.6 | |
| Class 11 Environmental Control | 26.1% | 62.5% | 85.1% | 70.0% | 11.7 | |
| Class 38 Telecommunications | 25.9% | 75.0% | 79.0% | 60.4% | 15.4 | |
| Class 40 Treatment & Processing | 25.6% | 70.1% | 84.1% | 66.3% | 13.6 | |
| Class 27 Floor Coverings | 25.4% | 59.0% | 81.7% | 66.1% | 12.9 | |
| Class 10 Medical Apparatus | 24.9% | 61.2% | 80.1% | 62.9% | 13.3 | |
| Class 42 Computer & Scientific | 24.9% | 67.9% | 81.2% | 65.2% | 13.8 | |
| Class 8 Hand Tools | 24.6% | 60.9% | 84.6% | 70.2% | 11.4 | |
| Class 2 Paints | 24.4% | 64.5% | 86.0% | 69.8% | 12.6 | |
| Class 22 Cordage | 23.9% | 63.8% | 84.5% | 70.1% | 11.9 | |
| Class 1 Chemicals | 22.9% | 63.2% | 82.7% | 64.8% | 13.6 | |
| Class 23 Yarns & Threads | 22.4% | 64.8% | 87.5% | 71.4% | 13.1 | |
| Class 6 Metal Goods | 21.5% | 68.9% | 87.1% | 72.1% | 13.5 | |
| Class 7 Machinery | 20.5% | 70.2% | 87.7% | 73.1% | 13.5 | |
| Class 17 Rubber Goods | 19.5% | 70.4% | 87.1% | 73.0% | 13.8 | |
| All 45 classes | 34.8% | 58.4% | 80.9% | 61.5% | 11.3 |
Filing without an attorney
69.4% of applications had an attorney on record. Those registered 67.0% of the time; applications without one registered 49.1% of the time. That gap is roughly what everyone assumes. Where it comes from is more useful.
It is not mostly the examination. Both groups drew Office Actions at similar rates: 61.3% without an attorney, 57.1% with one. The difference is what happened next. Among applicants without an attorney who drew an Office Action, 56.2% never answered it. With an attorney, 24.6%.
Plenty of people file a sound application on their own. Where going it alone costs the most is the response: reading an Office Action, working out what is actually refused, and replying before the deadline. That is the point where an hour of professional help is worth the most.
One caution: "attorney of record" includes attorneys appointed after filing, and people who hire counsel differ from people who do not in ways this data cannot see. Read the comparison as where the losses happen, not as proof that an attorney causes a registration.
Intent to use: the second place applications die
37.5% of applications reached a Notice of Allowance: the examiner was satisfied, the opposition period had closed, and only proof of use was left. 43.9% of those were still abandoned because no Statement of Use was ever filed. Applicants get six months from the Notice of Allowance and can buy up to five six-month extensions. Of the allowed applications that bought three or more, only 35.7% made it to registration.
If a product is two extensions in and still has not launched, the question worth asking is whether it will. And if you can file on actual use from the start, you skip this stage entirely.
How long it takes
Half of the applications that registered did so within 11.3 months of filing, and nine in ten within 26.4 months. Applications that drew an Office Action, or that were filed on intent to use, make up most of that long tail.
What to do with this
- Use an email address you read. The USPTO sends Office Actions and deadlines to the correspondence address on the application. A filing tied to an inbox nobody checks is the single most avoidable way to lose one.
- Put the response deadline in a calendar the day the Office Action arrives. The window is short, and a late response is treated exactly like no response. The free Office Action deadline tracker shows the due date from the file history and emails you before it.
- Get help at the response, if you get help at all. The data says that is where unrepresented applications fall behind, not at filing.
- Check before you file. Many Office Actions cite an earlier mark. The trademark availability check screens a name and logo against the U.S. and international registers first, and each class page shows these same outcomes for that class.
Methodology
- Source. The USPTO trademark bulk data, including the full prosecution history of every application: 2,204,883 applications and the events recorded against them.
- Cohort. Every application with a filing date from 1 January 2015 to 31 December 2019. Old enough that almost all have resolved; recent enough to reflect current examination.
- Outcome. "Registered" means a registration date was ever issued.
- Office Action. A non-final Office Action event in the file history. "Final refusal" is a final refusal event.
- Left unanswered. The USPTO's own abandonment event for failure to respond or late response, counted among applications that drew an Office Action. A small share of these were later revived by petition and registered; they are not counted as answered.
- Intent to use. A Notice of Allowance event, and abandonment for no Statement of Use, both read from their event codes. Extensions are the Statement of Use extension events.
- Classes. An application counts once in every Nice class it claims, so the class rows add up to more than the cohort. Percentages for classes under 10,000 applications are shown but not used in the prose.
- Refresh. Recomputed from the file histories on the first of each month.
Download: outcomes by Nice class (CSV). Reuse is welcome with a link to this page.