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:
Final Office Action Option #1 – File a Response that Satisfies All Outstanding Requirements
You’ll receive a final office action if you didn’t 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.
Final Office Action Option #2 – File a Request for Reconsideration
You’ll 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, deceptive, primarily geographically descriptive, or primarily 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 doesn’t extend the deadline for filing an appeal with the TTAB.
Final Office Action Option #3 – File an Appeal with the TTAB
Regardless of the issues raised by the trademark examining attorney, you have the right to file a trademark appeal with the TTAB. The appeal must be timely filed or else your application will go abandoned. If you filed your trademark application directly with the USPTO, then the deadline for filing the appeal is three months from the mailing date of the final office action (or six months if you timely filed a Request for an Extension of Time to File a Response). If you’re seeking an extension of protection of your trademark in the United States through WIPO and the Madrid Protocol, then the deadline for filing the appeal is six months from the mailing date of the final office action.
The Notice of Appeal and all subsequent legal briefs should be submitted electronically. 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 knowledgeable trademark attorney to maximize the chances of winning your appeal.
I Can Help With All of These Options
I’m experienced US trademark attorney Morris Turek. If you have any questions or concerns about how to effectively deal with a final office action, please feel free to contact me at (314) 749-4059, through email at morris@yourtrademarkattorney.com, or through my contact form found below. I can help you avoid the unnecessary costs and consequences of your trademark application inadvertently going abandoned, and am always happy to provide assistance to you.