This question is one that is frequently asked by our trademark clients. Once a Final Refusal has issued in an Office Action, a trademark applicant can file a request for reconsideration with the Examining Attorney, file an appeal with the Trademark Trial and Appeal Board (the “Board)”, or the applicant can file both a request for reconsideration and an appeal simultaneously. In the latter case, the trademark applicant should indicate in its Notice of Appeal that it has filed a request for reconsideration in conjunction with the Notice of Appeal. Moreover, we recommend that once the two filings are made that the applicant file with the Board a request to suspend the appeal until there has been a decision on the request for reconsideration and specifically request that the application be remanded to the Examining Attorney.
A request for reconsideration is a tool that is often overlooked by trademark practitioners. Often, it can be an effective strategy to avoid the need for an appeal or it can build a stronger record for an appeal, if in the end an appeal is required. To use this strategy effectively, a trademark applicant should raise new arguments in the request for reconsideration. In fact, the applicant would be wise to introduce additional evidence and even request an amendment intended to overcome the refusal in the request for reconsideration.
For example, if an Examiner refused an application based on the mark being merely descriptive of the goods or services, then an applicant could amend the application to claim acquired distinctiveness or the applicant could request to amend the application to the Supplement Register instead of the Principal Register. Yet another example would be if there was a likelihood of confusion refusal issued, then in this case the applicant could amend the application to narrow the identification of goods, limit the trade channels, or the applicant could acquire consent from the registrant and submit the consent with its request for reconsideration.