After filing a trademark application, you will have to wait several months for the Trademark Office to review your application. If the examining attorney reviewing your application sees a problem, they will issue an office action. Some of these issues can be easily addressed. However, some issues are nearly impossible to overcome. If you respond to the office action, but do not successfully overcome any such problems, the examiner will issue a final office action. At that point, you can either file a Request for Reconsideration or file an appeal with the Trademark Trial & Appeal Board.
The Request for Reconsideration
There are many reasons that you might receive an office action. Some of these reasons include issues that are more “administrative” in nature. For example, you may need to revise how your application describes the goods/services used in connection with your mark. However, there are many more “substantive” reasons for an office action. The Trademark Office might issue a likelihood of confusion refusal based on an existing registration. When responding to an office action, you need to make sure to address all of the issues it raises. You might choose to follow any suggestions made by the examiner. If you disagree with the examiner, you might instead choose to argue against them.
If your response does not resolve the issues raised in the initial office action, the examiner will issue a final office action. You will generally have only three months to file a Request for Reconsideration. Unlike with the previous office action response, filing a Request for Reconsideration does not “reset the clock” in terms of your deadline. That means if the examiner reviews your response before the deadline and not all issues have been addressed, they will issue a subsequent final office action. On the other hand, if they do not review your request until after the filing deadline and the request does not resolve all issues, your application will go abandoned unless you have filed for an appeal.
Appeals
When filing a Request for Reconsideration, it can be a good idea to simultaneously file a Notice of Appeal. That way, if the examining attorney determines the request does not address all outstanding issues, you avoid your application being immediately abandoned. If you want to appeal a rejection, you also may file a Request for Reconsideration to get more evidence on the record. This can help bolster your case for the appeal. If you left anything out of your original office action response (e.g. evidence, other arguments) you can add those in the Request. It is possible that you might persuade the examiner on this second attempt. If not, you will still be in a better position for the appeal.
Do You Need To File a Request for Reconsideration?
If you have received a final office action, you need to act quickly to determine the best course of action. I would be happy to take a look at your application and final office action to help you determine what your options are. If you would like me to assist you, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
