Responses to Trademark Final Rejections

A final rejection is issued in a trademark application after one or more office actions. This signals that the examiner has made a conclusive determination that the mark cannot be registered in its current form. The examining attorney believes the grounds for refusal have not been sufficiently addressed, and the application will not proceed without further action.

There are several possible responses to a final rejection, including the following:

File A Response Satisfying All Outstanding Requirement

If the examining attorney raised relatively straightforward issues in a previous non-final office action that have not yet been addressed, the final office action would maintain any rejections based on these issues. For example, the examiner may have requested that the identification of the goods and services be amended, a disclaimer for a descriptive portion of the applied-for mark be entered, or the description of a design portion of the mark be modified.

If a response that fully satisfies all outstanding issues in the pending final office action is filed, the trademark application will be approved and will continue through the registration process. However, if the response does not satisfy all the outstanding issues, another final office action will be issued, maintaining those rejections based on these outstanding issues.

Request for Reconsideration

A request for reconsideration (request) filed with the examiner is a proper response to a final rejection. This request must be filed within three months of the mailing date of the final office action. If filed before the initial three-month deadline, a three-month extension may be requested for a fee.

In addition to the arguments on record, a request for reconsideration can raise new issues, including amendments and new evidence. These new issues will be entered into the record if they place the application in a condition for publication or if they place the application in a better form for an appeal before the Trademark Trial and Appeal Board (TTAB).

Any office actions subsequently issued in connection with the filed request for reconsideration must address the arguments on record as represented in the request and any new arguments or evidence presented in the request. If the final rejection is subsequently appealed to the TTAB, these new arguments and evidence will be considered as part of the record in the appeal.

Appeal to the TTAB

Filing a trademark appeal with the TTAB is also considered a proper response to a final refusal. Similar to a request for reconsideration, a notice of appeal must be submitted to the TTAB within three months of the mailing date of the final office action. If filed before the initial three-month deadline, a three-month extension may be requested for a fee. Furthermore, an appeal brief must be submitted to the TTAB within two months of the filing date of the notice of appeal.

It is important to note that filing a request for reconsideration or an extension does not extend the three-month deadline to file a notice of appeal. Therefore, a notice of appeal and a request for reconsideration are often filed simultaneously, especially if it is not certain that the filed request will not resolve all outstanding issues in the final office action.

As discussed above, any additional arguments and evidence submitted in a request for reconsideration will be part of the record for the appeal at the TTAB.

How TCP Law Can Help

A TCP Law trademark attorney can help evaluate the pending issues of a final rejection and how best to respond to a final office action.

For assistance with responding to a final office action or with any trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.