What is a final trademark refusal or Final Office Action?
A final trademark rejection, also known as a Final Office Action, is typically a second rejection of a trademark application following the applicant’s response to the first rejection. The same grounds will be asserted in the Final Office Action as in the Non-final Office Action. This second refusal on the same grounds typically occurs when a USPTO trademark examining attorney remains unconvinced after reviewing a response to the first Office Action in which the refusal was introduced.
For example, you could receive a first (non-final) Office Action containing a refusal based on factors such as the likelihood of confusion, merely descriptive mark, or failure-to-function as a trademark. You respond to this non-final Office Action with arguments and, if necessary, amendments. If the examining attorney is not persuaded by your Office Action response, a Final Office Action will be issued with a final trademark rejection.
What are the 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;
- Appeal;
- 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 essentially a response to a Final Office Action that includes arguments and, in some cases, amendments. When you have new evidence for the examining attorney to consider, this option makes more sense. Consider amending your identification of goods to remove certain items that overlap with or relate to goods in cited registrations, for example. If you’re dealing with a purely descriptive refusal, you might discover some new evidence demonstrating why consumers would not consider your mark to be descriptive of a feature of your product or service.
You should not file a Request for Reconsideration that simply repeats the same arguments. A response that simply rehashes previously made arguments while providing no new information is doomed to fail.
Should you appeal a final trademark rejection?
An appeal is only available after receiving a second refusal on the same grounds, and it may make sense if you do not have any new evidence or amendments to provide. The appeal process begins with the filing of a notice of appeal and the payment of the appeal fee within six months of the date of the Final Office Action. Within 60 days of the date of the appeal, an appeal brief with the USPTO appeal brief fee is due.
To give yourself more time, you could file the notice of appeal near the end of the 6-month triggered by the Final Office Action. After that, you’d have about two months to file your appeal brief.
Can you file both a Request for Reconsideration and an appeal concurrently?
Yes, an applicant may file a Request for Reconsideration as well as 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 outcome would occur before the 6-month deadline expired. If you wait too long and file a Request for Reconsideration close to the 6-month FOA deadline, the USPTO may not respond to your reconsideration request in time. Filing the reconsideration request earlier allows you to determine whether an appeal is still necessary.
How should you respond to a Final Office Action if the 6-month deadline is quickly approaching?
Assume you filed a Request for Reconsideration and the refusal has not yet been withdrawn, despite the fact that the 6-month deadline from the Final Office Action is rapidly approaching. You may file your Notice of Appeal on or near the deadline. After that, you will have 60 days to file your appeal brief.
If you have not yet filed a response to a final refusal, you may file a Request for Reconsideration and a Notice of Appeal at the same time, and the appeal process will be suspended while you await a decision on your reconsideration request.
You can ask for a suspension of your appeal pending the outcome of the reconsideration decision, as well as a remand of the application to the trademark examining attorney. This will push back the deadline for filing an appeal brief and may save you money if the reconsideration decision is favorable.
What if you want to cancel the blocking cited registration?
If your grounds for cancellation are timely, you may be able to file a Petition to cancel the blocking registration(s). For example, a cancellation based on previous use (i.e., priority) is only available for registrations that are less than 5 years old. If you file a cancellation petition against the cited registration, you may request that your trademark application be suspended pending the outcome of the cancellation proceeding.
The trademark registration will be canceled if the registration owner (registrant) fails to respond to the petition. If the registrant submits an answer, you may still be able to pursue certain outcomes that do not necessitate litigating the case to its conclusion. For example, by signing a consent agreement, the parties may be able to negotiate a friendly coexistence.
Can you pursue a consent agreement with the registration owner without filing a cancellation?
Sure, if you still have time before your Office Action deadline. In practice, you may be forced to file a cancellation for a variety of reasons. The owner of the registration may be unresponsive to friendly communications. Furthermore, the USPTO will not suspend outstanding deadlines based on amicable attempts to reach an agreement with registration holders. A pending cancellation proceeding, on the other hand, would be reason enough to suspend a trademark application.