Should I File a Request for Reconsideration with the Trademark Office?

A Request for Reconsideration comes into play when the trademark examining attorney in charge of reviewing your trademark application issues an office action indicating that the refusal to register your trademark has now been made final.

A Request for Reconsideration is generally used for two different purposes.  The first purpose is for the owner of a trademark application to comply with a technical or procedural requirement raised by the trademark examining attorney.  For example, let’s say you receive an office action requesting that you amend the identification of products/services in your application because it does not conform to the Trademark Office’s standards.  You look at the Trademark Office’s ID Manual and come to the conclusion that there is absolutely nothing wrong with the way you described your products/services.  So, you file a response to the office action arguing your position.  The trademark examining attorney reviews your response but continues to believe that an amendment to your application is required.  He then sends you a second office action making his refusal to register your trademark final.  After some thought, you decide it is not worth the time and expense of appealing the trademark examining attorney’s decision to the Trademark Trial and Appeal Board, so you submit a Request for Reconsideration consisting of the requested amendment.  The trademark examining attorney then approves your trademark application and allows it to proceed to the next step of the trademark registration process.

The second purpose of filing a Request for Reconsideration is to strengthen the evidentiary record in anticipation of appealing the trademark examining attorney’s final refusal to the Trademark Trial and Appeal Board.  For instance, let’s say you receive an office action indicating that the trademark examining attorney is refusing to register your mark on the basis that it is merely descriptive of the products/services listed in your application.  You carefully review the office action and conclude that the trademark examining attorney is completely wrong in his assessment of your trademark.  So, you decide to research, prepare, and submit an argument as to why your trademark is not merely descriptive.  The trademark examining attorney reads your response but finds your arguments unpersuasive.  He then issues a second office action informing you that he is making his refusal to register your trademark final.  You think you have a really good case and decide that you are going to appeal the refusal to the Trademark Trial and Appeal Board.  But, before you do, you want to get additional arguments and evidence into the record so that the Board can consider them as part of your appeal.  So, you prepare and file a Request for Reconsideration that includes all of these additional materials.  Sometimes, the trademark examining attorney will withdraw his final refusal after reviewing the Request for Reconsideration.  If not, you have the option of moving forward with the appeal.

One important thing to keep in mind is that a Request for Reconsideration does not extend the time in which to appeal the trademark examining attorney’s final refusal.  Therefore, if you anticipate having to file an appeal, it is good practice to file a Notice of Appeal soon after receiving the final refusal in order to preserve your right to appeal just in case your Request for Reconsideration is denied.

If you have received a final refusal from the Trademark Office and need some assistance with preparing and filing a Request for Reconsideration, please contact me right away for your free consultation.  I look forward to hearing from you soon.