What is a final trademark refusal or a Final Office Action?
A final trademark refusal is typically a second rejection of your trademark application that is based on the same grounds. This second refusal on the same grounds usually occurs when an unconvinced USPTO trademark examining attorney does not withdraw a refusal after reviewing a response to the first Office Action where the refusal was introduced. For example, you may receive an initial refusal in a first Office Action containing a refusal based on certain grounds, such as likelihood of confusion, merely descriptive mark, or failure-to-function as trademark. You file a response to this non-final Office Action with arguments, and possibly amendments, to overcome the refusal. If the examining attorney is not persuaded by your Office Action response, a final trademark refusal will be issued in the form of a Final Office Action.
What are options in responding to a final trademark refusal?
An applicant has a few options in response to a Final Office Action:
- File a Request for Reconsideration;
- Petition to Cancel the blocking trademark registration;
- Combinations of the above.
Let’s briefly explore these ways to respond to a final trademark refusal.
What is a Request for Reconsideration, and when should you file it?
A Request for Reconsideration is basically a response to a Final Office Action that contains arguments and possibly amendments. Such an option makes more sense when you have new evidence for the examining attorney to consider. For example, you might consider an amendment to your identification of goods that removes certain items that overlap with or relate to goods in cited registrations. If you’re dealing with merely descriptive refusal, you might find some new evidence to show how consumers would not find your mark to be descriptive of a characteristic of your product or service.
What you should not do is file a Request for Reconsideration that merely repeats the same arguments. Such a response that simply rehashes previously made arguments without any information is bound for failure.
What is a trademark application appeal?
An appeal is available only after receiving a second refusal on the same grounds. Appealing your trademark application refusal may make sense when you have no new evidence, amendments or information to provide. The appeal process starts by first filing a notice of appeal and paying the appeal fee within 6 months from the date of the Final Office Action. An appeal brief is due within 60 days of the date of the appeal.
To give yourself more time, one option is to file the notice of appeal towards the end of the 6-month deadline triggered by the Final Office Action. Thereafter, you would have about 2 months to file the appeal brief.
Can you file both a Request for Reconsideration and an appeal concurrently?
Yes, an applicant can file both a Request for Reconsideration and an appeal. In terms of timing, it would be preferable to file the Request for Reconsideration earlier within the 6-month response period to see if a favorable result would occur prior to the expiration of the 6-month deadline. If you wait too long and file a Request for Reconsideration near the 6-month FOA deadline, the USPTO might not issue a decision on your reconsideration request in time. Filing the reconsideration request earlier gives you leeway to see if an appeal would still be required.
If the refusal has not been withdrawn and the 6-month deadline from the Final Office Action is approaching, you can then file the notice of appeal at or near the deadline. You will then have 60 days thereafter to file your appeal brief.
What if you want to cancel the blocking cited registration?
You might be able to file Petition to Cancel the blocking registration(s) if your grounds for cancellation are timely. For example, a cancellation based on your earlier use (i.e., priority) is only available against registration less than 5 years old. If you petition to cancel the cited registration, you may request to suspend your trademark application pending the outcome of the cancellation proceeding.
If the registration owner (registrant) fails to answer the petition, the trademark registration will be canceled. If the registrant submits an answer, you might still to be able to pursue certain results that do not require litigating the case to the end. For example, the parties might be able to negotiate a friendly coexistence by signing a consent agreement.
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