What If a Final Refusal Is Issued in a Trademark Prosecution?

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.

A request for reconsideration and an appeal must be filed within three months of the issuance of a Final Refusal. Please see our page entitled, New Response Period for Trademark Actions, for the recent rule changes. However, an applicant can file one extension for an additional three months, allowing for a six month response period. As we mentioned above, we recommend filing both a request for reconsideration and an appeal simultaneously so that you can preserve your right to appeal, but also take advantage of the less costly option of a request for reconsideration. If an applicant is unsuccessful in persuading the Examiner with a request for reconsideration, then it can still appeal to the Board. If an applicant is unsuccessful as mentioned with the reconsideration request and does not file the appeal, often it is too late to do so once you receive the decision from the request for reconsideration (depending on when the reconsideration request was filed) and then, the trademark application will be considered abandoned. If an applicant is successful, then the appeal will be rendered unnecessary.

A request for reconsideration also provides the applicant with the advantage of expanding the record on appeal. In addition, it will buy the applicant more time to respond to newly raised issues. Using my earlier example of the applicant raising acquired distinctiveness for the first time in the request for reconsideration, this will prompt a non-final office action for purposes of appeal. This means that the applicant will receive another six months to respond to the non-final office action.

Another issue often raised in requests for reconsideration is the need for disclaimers. This issue is an ideal issue to raise in a request for reconsideration because a disclaimer is one of the few amendments permissible after the Board has issued a decision on appeal. Therefore, if after an appeal, the Board determines that the disclaimer is proper, then the trademark applicant will be given an opportunity to submit a disclaimer and proceed to registration. Typically, the Board will allow the applicant 30 days from the date of the decision on appeal to submit a disclaimer. If you are have difficulty with an Office Action or are concerned about a specific request made an Examining Attorney in an Office Action, please feel free to contact our office for a courtesy consultation and we would be happy to examine your options with you.