The United States Patent and Trademark Office (USPTO) will issue a post-registration office action if you file a trademark registration renewal or maintenance document that doesn’t satisfy all of the legal requirements. Here’s a list of documents that could trigger an office action if filed incorrectly:
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. If you fail to do so, in both cases your trademark application will go abandoned and you’ll have little choice but to begin the trademark application process all over again.
If you receive a final office action, you basically have three options:
You have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB) when the trademark examining attorney issues a final refusal to federally register your mark. For example, let’s say you file a trademark application and the trademark 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 trademark 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 trademark examining attorney indicating that he did not find your arguments persuasive and that he’s now making his refusal to register your trademark final.
A Request for Reconsideration comes into play when the trademark 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 two different purposes:
During the US trademark application process, the United States Patent and Trademark Office (USPTO) may send you a trademark office action. A trademark office action is a communication from a trademark examining attorney indicating why your trademark cannot be approved for registration. A non-final office action is typically issued after the examining attorney (1) reviews your trademark application, (2) reviews the Statement of Use, and/or (3) reviews an Amendment to Allege Use. In general, if your trademark application was filed directly with the USPTO, then you must respond to the trademark office action within three months of it being 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 respond to the trademark office action within six months of it being sent.
If you don’t file a response by the deadline, your trademark application will go abandoned and you’ll be forced to begin the trademark registration process all over again (unless you’re eligible to file a Petition to Revive).
