Trademark Office Action

It’s extremely common to receive a trademark office action from the United States Patent and Trademark Office (USPTO) after filing a trademark application.  You may also receive an office action after filing the Statement of Use or an Amendment to Allege Use.  If you don’t file a response that addresses the issues raised in the office action within three months of the office action being issued, then your trademark application will go abandoned.

But what if you can’t file a response by the three-month deadline?  What if you need more time to conduct research and to draft an argument to attempt to overcome a major rejection (such as a likelihood of confusion refusal)?  Maybe you require some additional time to discuss the office action with the examining attorney in charge of your application?  Perhaps you need time to seek the assistance of a skilled and knowledgeable trademark attorney?  Whatever the reason, you can file a Request for an Extension of Time to File a Response to the office action.

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A final office action is issued by the United States Patent and Trademark Office (USPTO) if you didn’t successfully or properly respond to all of the issues raised in a previous trademark office action.  If your trademark application was filed directly with the USPTO, then you must take action within three months from the date the final office action is sent (or six months if you timely filed a Request for an Extension of Time to File a Response).  On the other hand, if you’re seeking an extension of protection of your trademark in the United States through WIPO and the Madrid Protocol, then you must take action within six months from the mailing date of the final office action.  In both cases, if you fail to do so, your trademark application will go abandoned and you’ll have little choice but to begin the trademark application process all over again (unless you’re eligible to file a Petition to Revive).

If you receive a final office action, you basically have three options:

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You have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB) when the examining attorney issues a final refusal to federally register your mark.  For example, let’s say you file a trademark application and the examining attorney sends you a trademark office action refusing registration of your trademark on the basis that there’s a likelihood of confusion with another mark that’s already registered.  In order to attempt to overcome the rejection, you research, prepare, and submit arguments and evidence to the examining attorney pointing out all of the differences between the two marks and detailing why your trademark application should be approved.  A few weeks later, you receive a final office action from the examining attorney indicating that he did not find your arguments persuasive and that he’s now making his refusal to register your trademark final.

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A Request for Reconsideration comes into play when the examining attorney in charge of reviewing your trademark application issues a trademark office action indicating that the refusal to register your mark has now been made final.  A Request for Reconsideration is generally used for three different purposes:

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