Receiving an Office Action from CNIPA

During substantive examination, if a CNIPA examiner identifies issues with your trademark application, they will issue an office action — a formal notification of the grounds for refusal. You typically have 15 days from receipt to respond (extendable by 30 days upon request). Failure to respond results in automatic abandonment.

Types of Office Actions

1. Absolute Grounds Refusal

The examiner believes your mark violates absolute registration requirements — lack of distinctiveness, deceptive nature, prohibited signs under Article 10, or generic description of goods/services.

Response strategy: Argue that the mark has acquired distinctiveness through extensive use (provide evidence of advertising, sales figures, media coverage). Alternatively, argue the mark is suggestive rather than descriptive, or that the public would not be misled.

2. Relative Grounds Refusal (Citation of Prior Marks)

The most common type: the examiner cites one or more prior registered marks that they consider confusingly similar to yours for identical or similar goods.

Response strategy:

• Argue dissimilarity: Your mark and the cited mark differ in appearance, pronunciation, or meaning
• Argue different goods/services: The cited mark covers different goods/services
• Request a coexistence agreement with the prior rights holder
• File a non-use cancellation against the cited mark if it's been registered for 3+ years without use
• Request suspension of examination pending the outcome of an opposition or cancellation

3. Formal Deficiency Notice

Missing documents, unclear trademark specimen, or incorrect goods/services descriptions.

Response strategy: Correct the deficiency and resubmit. These are usually straightforward to fix.

Building an Effective Response

1. Read the office action carefully: Understand each ground of refusal. Don't rush.
2. Address every point: If the examiner raised 3 issues, your response must address all 3. Missing one will result in final refusal.
3. Provide evidence: For acquired distinctiveness arguments, submit sales records, advertisements, consumer surveys, and industry awards.
4. Cite precedent: Reference prior CNIPA decisions or court cases where similar marks were accepted.
5. File on time: The 15-day deadline is strict. Use the 30-day extension if needed.

After Submission

CNIPA typically responds within 2-4 months. If your arguments are accepted, the mark proceeds to publication. If not, you'll receive a final refusal. At that point, you can appeal to the Trademark Review and Adjudication Board (TRAB) within 15 days.