What Happens After a Final Trademark Office Action?

A final office action is the examining attorney’s statement that your first response did not resolve the refusal or requirement, and that ordinary examination is over. It is not a denial of the application, and it is not the end of the road. Within the response period you can ask the examiner to reconsider, appeal to the Trademark Trial and Appeal Board, do both at once, or decide that the mark is not worth the fight and refile something stronger. Each path has a different cost and a different chance of success, and the trademark office action and appeal practice at CLP starts by asking which one the record supports.

Why the examiner made the trademark office action final

An action can be made final only on an issue that was raised in the earlier nonfinal action and that your response did not overcome. If the examiner raises a new refusal or a new requirement, that point must be presented in a nonfinal action and you get a fresh chance to respond. Read the final action closely for anything new, because the distinction affects both your options and your deadline.

The final action also tells you how close you came. An examiner who writes two pages responding to your evidence was engaged by it; an examiner who repeats the first action word for word was not. That tone is a rough guide to whether reconsideration has any prospect.

Path 1: Request for reconsideration

A request for reconsideration goes back to the same examining attorney with something new: additional evidence, a new argument, or an amendment that satisfies the requirement. It is the right tool when the fix is concrete, such as entering a disclaimer the examiner demanded, narrowing the identification of goods to remove an overlap, substituting a specimen that was in use on the relevant date, or submitting a consent agreement that arrived after the first response was filed. Our posts on responding to a likelihood of confusion refusal and answering a merely descriptive refusal describe the kinds of evidence that move an examiner.

A request for reconsideration does not stop the clock. If the examiner denies it after the response period has run, and no appeal was filed, the application is abandoned. That is why reconsideration is usually filed together with a notice of appeal.

Path 2: Appeal to the Trademark Trial and Appeal Board

An ex parte appeal asks a panel of administrative trademark judges to decide whether the examiner’s refusal was correct on the existing record. You file a notice of appeal and pay the appeal fee for each class within the response period. The Board sets a briefing schedule: your appeal brief, the examining attorney’s brief, and your optional reply. You may request an oral hearing, though most appeals are decided on the briefs.

The record is the key limit. The Board decides the appeal on the evidence that was in the application file when the appeal was filed, and it will not consider new exhibits attached to a brief. If you need to add evidence, you ask the Board to remand the application to the examiner for that purpose, and you need good cause. This is why the first response should contain every exhibit you have; the appeal is the wrong place to discover a gap.

If the Board affirms the refusal, you may seek review by the Court of Appeals for the Federal Circuit or file a civil action in federal district court. If the Board reverses, the application proceeds to publication.

Filing both together

The usual strategy is to file the notice of appeal and the request for reconsideration at the same time. The Board suspends the appeal and remands the application so the examiner can consider the request. If the examiner withdraws the refusal, the appeal is dismissed as moot and the application moves forward. If the examiner maintains it, the appeal resumes with the new evidence already in the record, which is the only way to get it before the Board. Filing both preserves every option on a single deadline.

Path 3: Let it go and refile

Sometimes the final action is right. If the mark is descriptive and you have no evidence of acquired distinctiveness, or the cited mark is strong and the goods are plainly related, an appeal spends money defending a weak position. The alternatives are to amend to the Supplemental Register where the refusal is descriptiveness and the mark is in use, or to abandon the application and file a new one for a modified mark or narrower goods through our trademark registration practice. A new application loses the original filing date, so run the decision against what that priority is worth.

The deadline and what we need from you

The response period for a final action is the same as for a nonfinal one: three months from the issue date, with one paid three-month extension available if requested before the first deadline, as explained in our post on the trademark office action response deadline. To evaluate the options we need the full application file, including the first response and every exhibit, the final action itself, any new evidence that has become available since the first response, and a frank statement of how important this particular mark is to the business. If the answer is that the business would survive a rename, that shapes the advice. If the mark is on every product and the website, the appeal, run through our TTAB proceedings practice, is usually worth the cost.

If a final office action has arrived and you want a clear recommendation among reconsideration, appeal and refiling, a consultation with Capitol Law Partners can provide one before the response period narrows your choices. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our final office action and TTAB appeal page or schedule a consultation.