A final office action is issued by the United States Patent and Trademark Office (“USPTO”) if you did not successfully or properly respond to all of the issues raised in a previous trademark office action. If you fail to take action within six months from the date the final office action is sent, your trademark application will go abandoned and you will have little choice but to begin the trademark registration process all over again.
If you receive a final USPTO office action, you basically have three options:
Option #1 – File a Response that Satisfies All Outstanding Requirements
You will receive a final office action if you did not properly address a relatively straightforward issue raised in a previous non-final office action. For instance, the trademark examining attorney may have requested that you amend the identification of products/services listed in your trademark application, enter a disclaimer of a descriptive portion of your trademark, or modify the description of any design elements that are part of your trademark. In the event you failed to comply with the trademark examining attorney’s requests, a final office action will be issued reiterating those same requests. If you prepare and file a response to the final office action that fully satisfies all outstanding requirements, then the trademark examining attorney will approve your trademark application and it will continue through the registration process. If you don’t, your application will go abandoned.
Option #2 – File a Request for Reconsideration
You will also receive a final office action if you were unable to previously overcome a serious substantive rejection of your trademark application. While the most common substantive rejection is likelihood of confusion, your trademark can also be refused registration for many other reasons, including if your trademark is merely descriptive, scandalous, deceptive, geographically descriptive, or merely a surname. In the event you were unsuccessful in persuading the trademark examining attorney to withdraw the rejection, you may want to consider preparing and filing a Request for Reconsideration in order to submit additional arguments and evidence that might sway the trademark examining attorney in your favor. If the Request for Reconsideration fails, you can use these additional arguments and evidence in an appeal to the Trademark Trial and Appeal Board (“TTAB”) (see Option #3 below). One thing to remember is that filing a Request for Reconsideration does not extend the deadline for filing an appeal with the TTAB, which is six months from the mailing date of the final office action.
Option #3 – File an Appeal with the Trademark Trial and Appeal Board
Regardless of the issues presented in a final office action, you have the right to file an appeal with the Trademark Trial and Appeal Board (“TTAB”). Again, the appeal must be timely filed or else your application will go abandoned. The Notice of Appeal and all subsequent legal briefs can be submitted electronically with the TTAB. Because an appeal can involve complex legal issues and will require an intimate knowledge of the TTAB’s rules and procedures, I urge you to consider working with a skilled and experienced trademark attorney to maximize the chances of winning your appeal.
If you have any questions or concerns about how to effectively deal with a final office action, please feel free to contact me. As a trademark attorney, I can help you avoid the unnecessary costs and substantial consequences of your trademark application inadvertently going abandoned. I’m always glad to provide assistance.