What is a final refusal to register?

Is a twice-rejected trademark application the end of the road? When you receive a second Office Action maintaining a refusal to register, does it make any sense to pursue another response. So you responded to the first rejection by filing a response to a non-final Office Action. In that first Office Action response, you made arguments against the reasons why the trademark examiner, called an examining attorney, believed your mark should be refused registration. However, the examining attorney found your non-final Office Action response unpersuasive, so they issued a Final Office Action (FOA) maintaining the refusal. You do have options in responding to a final refusal to register. A Request for Reconsideration may be an effective response if you have new evidence or issues to present.

What is a Request for Reconsideration?

Short of filing an appeal, any response filed after a trademark Final Office Action that responds to outstanding refusals or requirements is considered a request for reconsideration under TMEP 715.03. An effective reconsideration request should present new evidence or new issues for the examining attorney to consider.

For example, if a blocking registration has since been canceled, this would be an important new piece of evidence to introduce.

Does a Request for Reconsideration suspend or extend deadlines?

No, a Request for Reconsideration does not suspend or push back the deadline to respond to a Final Office Action. If you are thinking of requesting reconsideration, here are some strategies to consider:

  • Request reconsideration earlier during the response period, which will increase the probability of receiving a decision by the Final Office Action 6-month deadline.
  • If the 6-month deadline is quickly approaching and file a Notice of Appeal in addition to the reconsideration request.

Filing a Notice of Appeal also prevents your application from being abandoned if the examining attorney does not allow your mark after reviewing your reconsideration arguments.

What arguments would help an examining attorney reconsider?

Avoid regurgitating the same arguments previously presented in your first Office Action response. You need to come up with new evidence or issues that bolsters your arguments against the refusal. Are there any poignant facts regarding the cited registrations that should be mentioned? Any bits of information during the prosecution history of the cited registration that may be relevant in refuting a likelihood of confusion refusal?

What other issues in the Final Office Action should you address?

Make sure to address any remaining issues raised in the Final Office Action. For example, if an indefinite objection to your identification of goods/services has been raised, make sure to revise the identification in your reconsideration request. This will also reduce the number of issues to be contested in the appeal.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com