What is a final trademark refusal 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.
For example, you may receive a first (non-final) 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. If the examining attorney is not persuaded by your Office Action response, a final trademark rejection 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(s);
- Coexistence agreement with the trademark registration owner(s); or
- 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. A response that simply rehashes previously made arguments without any new information is bound for failure.
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, 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.
How should you respond to a Final Office Action if the 6-month deadline is quickly approaching?
Suppose you filed a Request for Reconsideration and the refusal has not yet been withdrawn while the 6-month deadline from the Final Office Action is quickly approaching. You can file the Notice of Appeal at or near the deadline. You will then have 60 days thereafter to file your appeal brief.
If you have not yet filed any response to a final refusal, you may simultaneously file a Request for Reconsideration and a Notice of Appeal, and suspend the appeal process while waiting for a decision on your 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 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.
Can you pursue a consent agreement with the registration owner without filing a cancellation?
Sure, if you have enough time remaining in 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.