Final Rejection: How to Respond to a Trademark Final Office Action

What is a final trademark rejection or Final Office Action?

Known as a Final Office Action, a final trademark rejection is typically a second rejection of a trademark application following the applicant’s response to the first rejection. A Final Office Action will contain the same grounds asserted in the Non-final Office Action. This second refusal on the same grounds usually occurs when an USPTO trademark examining attorney remains unpersuaded after reviewing a response to the first Office Action where the refusal was introduced.

Need to get your trademark registered? Call US patent and trademark attorney Vic Lin at 949-223-9623 or email to see how we can help you overcome your trademark rejection.

If you would like a flat rate estimate for a response to your trademark refusal, please email me a copy of your Office Action or trademark application number.

What are your options in response to a trademark application final refusal?

So you received a first Office Action containing a refusal based on certain grounds. This non-final Office Action may have contained refusals such as likelihood of confusion, merely descriptive mark, or failure-to-function as trademark. You filed a response to this non-final Office Action with arguments and possibly some amendments. Unfortunately, the USPTO trademark examining attorney is not persuaded by your Office Action response. A final trademark rejection in the form of a Final Office Action has been issued.

You have a few options in response to a Final Office Action:

  1. File a Request for Reconsideration;
  2. Appeal;
  3. Petition to Cancel the blocking trademark registration(s);
  4. Coexistence agreement with the trademark registration owner(s);
  5. File an expungement or reexamination to remove the blocking registered trademark; or
  6. 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?

Essentially, a Request for Reconsideration contains arguments and possibly amendments. This option makes more sense when you have new evidence for the trademark examining attorney to consider. For example, you might consider an amendment to your identification of goods that removes certain items that overlap with goods in the cited registrations. If you’re dealing with a merely descriptive refusal, you might find new evidence to show how consumers would not find your mark to be descriptive of a characteristic of your product.

What you should not do in a Request for Reconsideration is merely repeat the same arguments. A response that simply rehashes previously made arguments without any new information is bound to fail.

Should you appeal a final trademark rejection?

Available only after receiving a second refusal on the same grounds, an appeal may make sense when you have no new evidence or amendments 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 with the USPTO appeal brief fee 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, you 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 response period to see if a favorable result would occur prior to the expiration of the extended 6-month deadline. Keep in mind you may need to file a request for an extension of time in order to buy yourself the full 6-month period.

If you wait too long and file a Request for Reconsideration near the extended 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.

How should you respond to a Final Office Action if the deadline is quickly approaching?

Suppose you filed a Request for Reconsideration and the refusal has not yet been withdrawn while the deadline from the Final Office Action is quickly approaching. Consider requesting a 3-month extension. You can file the Notice of Appeal at or near the extended deadline. You will then have 60 days thereafter to file your appeal brief.

If you have not yet responded to a final refusal, you may concurrently file a Request for Reconsideration and a Notice of Appeal. Then suspend the appeal process while you wait for a decision on the reconsideration request.

You can request a suspension of your appeal pending the outcome of the reconsideration decision and request that the application be remanded to the trademark examining attorney. This will delay the appeal brief deadline and possibly save you money from having to prepare an appeal brief if the reconsideration decision is favorable.

What if you want to cancel the blocking cited registration?

You might consider filing a 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. After filing the petition for cancellation, request to suspend your trademark application pending the outcome of the cancellation proceeding.

If the registration owner fails to answer the petition, the trademark registration will be canceled. If the registrant submits an answer, you might still be able to pursue certain results that do not require litigating the case to the end. For example, both sides might be able to negotiate a friendly coexistence by signing a consent agreement.

Can you pursue a consent agreement with the registration owner without filing a cancellation?

Sure, you can explore a consent agreement with the registration owner without filing a cancellation. The issue is whether you have enough time to meet your Office Action deadline.

Practically, you may be compelled to file a cancellation for at least a few reasons. The registration owner may be unresponsive to friendly communications. Also, the USPTO will not suspend outstanding deadlines based on amicable attempts to seek coexistence with registrations owners. A filed cancellation proceeding, on the other hand, would be a sufficient reason to suspend a trademark application.

Need to respond to a final trademark rejection?

Contact patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you prevail over a trademark refusal.

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